Pharmaceutical companies, such as Teva Pharmaceuticals, name their medications using complex, made up names.
These names become fanciful marks, that have very little chance of becoming generic words.
In a recent UDRP involving six domain names, the matching .com of each trademark was registered just 3 days after the Complainant’s trademarks were applied for:
Complainant owns numerous trademark registrations around the world, including the following registered Benelux trademarks with a right of priority of December 16, 2019: NEOLESK, FIDALTO, KELVRI, TIZAYA, BRAVAYIS, and ZELVRI
The WIPO panelist sided with the Complainant, and the Respondent lost the case for neolesk.com, fidalto.com, kelvri.com, tizaya.com, bravayis.com, and zelvri.com. Full details follow:
Teva Pharmaceuticals USA, Inc v. Super Privacy Service LTD c/o Dynadot
Case No. D2020-05731. The Parties
Complainant is Teva Pharmaceuticals USA, Inc, United States of America (“United States” or “US”), represented by SILKA Law AB, Sweden.
Respondent is Super Privacy Service LTD c/o Dynadot, United States.
2. The Domain Names and Registrar
The disputed domain names <bravayis.com>, <fidalto.com>, <kelvri.com>, <neolesk.com>, <tizaya.com>, and <zelvri.com> (the “Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2020.
The Center appointed Scott R. Austin as the sole panelist in this matter on April 15, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that Complainant was established in 1901 and is one of the world’s largest generic medicines producers, providing “a wide range of generic products in nearly every therapeutic area”. Complainant is active in over 60 countries with approximately 45,000 employees around the world and produced approximately 120 billion tablets and capsules in 2017 at dozens of manufacturing facilities worldwide.
Complainant owns numerous trademark registrations around the world, including the following registered Benelux trademarks with a right of priority of December 16, 2019: NEOLESK, FIDALTO, KELVRI, TIZAYA, BRAVAYIS, and ZELVRI (each a “Teva Mark” and collectively, the “Teva Marks”) as more specifically set forth in the Annex to the Complaint:
a) Benelux trademark NEOLESK, No. 1411177, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5;
b) Benelux trademark FIDALTO, No. 1411182, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5;
c) Benelux trademark KELVRI, No. 1411188, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5;
d) Benelux trademark TIZAYA, No. 1411191, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5;
e) Benelux trademark BRAVAYIS, No. 1411212, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5; and
f) Benelux trademark ZELVRI, No. 1411200, registered on February 27, 2020, for use in connection with inter alia, “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” in class 5;
The priority date referenced in each of the above Benelux registrations for the respective Teva Mark is based on the fact that on December 16, 2019, Complainant filed an intent-to-use application to register each Teva Mark in the United States (Serial Nos. 88728516 (NEOLESK), 88728509 (FIDALTO), 88728518 (KELVRI), 88728521 (TIZAYA), 88728522 (BRAVAYIS), and 88728524 (ZELVRI)). Each US trademark application like the Benelux registrations, was in connection with “[p]harmaceutical preparations for the prevention and treatment of Alzheimer’s disease” and a range of other pharmaceutical goods in class 5.
Respondent, whose true identity remains unknown, registered the Disputed Domain Names <neolesk.com>, <fidalto.com>, <kelvri.com>, <tizaya.com>, <bravayis.com> and <zelvri.com> on December 19, 2019, a date which is three days after Complainant filed its US trademark applications for the respective Teva Marks. At the time of filing of the Complaint, “[a]ll of the [Disputed] Domain Names redirects to the auction site dan.com and are listed for USD 990 each.” Currently, each Disputed Domain Name resolves to a web page at “www.dan.com” that offers the Disputed Domain Names for sale by a “Private Seller” for USD 990.
5. Parties’ Contentions
A. Complainant
The Disputed Domain Name are identical or confusingly similar to a trademark or service mark in which Complainant has rights because:
a) “The Domain Names were registered on December 19, 2019 only three days after Complainant filed its US trademark applications.”;
b) “The Domain Names directly incorporates Complainant’s registered trademarks in its entirety which were registered on February 27, 2020.”;
c) “The addition of the gTLD ‘.com’ does not differentiate the Domain Names from the trademark”;
d) “The location of the trademarks, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP”;
e) “Where the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”;
f) “The Domain Names should be considered as identical to the respective trademark.”
Respondent has no rights or legitimate interests in the Disputed Domain Names because:
a) “The fact that Respondent has sought to sell the Domain Names for a substantial sum and registered the Domain Names only three days after Complainant’s US applications for the respective marks further suggests a scheme to derive unfair advantage of the Complainant.”;
b) “All of the Domain Names redirects to the auction site dan.com and are listed for USD 990 each.”;
c) “ Respondent who is known by the name Super Privacy Service LTD c/o Dynadot has been a frequent Respondent in UDRP proceedings” having been involved in “at least 142 cases”;
d) “Respondent’s registration of six Domain Names reflecting Complainant’s trademarks demonstrates a pattern of cybersquatting, calculated to prevent Complainant from using its trademarks in cyberspace” [and owning such names] “does not constitute noncommercial or fair use of the Domain Names”;
e) “Respondent is not making a fair use of the Domain Names, as Respondent has used the Domain Names, which are based on Complainant’s marks, only to direct users to parked websites offering the Domain Names for sale.”;
f) “There is no right or legitimate interest in such activity and registration for such a purpose indicates that no right or legitimate interest exists”; and
g) “ Respondent bears no relationship to the trademark and the Domain Names has no other meaning except for referring to Complainant’s trademarks and there is no way in which the Domain Names could be used legitimately.”
The Disputed Domain Names have been registered and are being used in bad faith because:
a) Bad faith is found where “before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark”;
b) “[…] that each of the disputed domain names were registered by the Respondent three days after the Complainant’s respective United States trademark applications were filed leads to the conclusion that the Respondent monitors such trademark applications and quickly registers identical domain names corresponding to such applied-for trademarks.”;
c) “Respondent was aware of Complainant’s trademark applications and that the disputed domain names were registered in anticipation of such applications maturing into registrations and viable trademark rights and as such constituted both a registration and use of the domain names in bad faith.”; and
d) Respondent “acted with the intention to commercially profit from Complainant’s anticipated nascent unique names and that under these circumstances the registrations and making use of the Domain Names even in anticipation of the Complainant’s accruing trademark rights in the [Disputed Domain Names]” justifies a finding of bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof is on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See section 4.2, WIPO Overview 3.0.
A. Identical or Confusingly Similar
To prove this element, Complainant must have trade or service mark rights and the disputed domain name must be identical or confusingly similar to Complainant’s trade or service mark.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. […] the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements”. WIPO Overview 3.0, section 1.1.2.
Complainant contends that the Disputed Domain Names were registered on December 19, 2019 only three days after Complainant filed its US trademark applications. While Complainant’s pending trademark application for each of the Teva Marks incorporated in their entireties into the corresponding Disputed Domain Names does not by itself establish trademark rights within the meaning of UDRP, paragraph 4(a)(i), there is evidence before the Panel that Complainant has established trademark rights. The Benelux registrations for each of the Teva Marks were registered on February 27, 2020. For purposes of the first element only, therefore, Complainant has demonstrated that it had trademark rights in each of the Teva Marks by the time Complainant filed its Complaint on March 6, 2020. “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.” WIPO Overview 3.0, section 1.1.3.
Prior UDRP panels have held that the location of the trademarks, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See, e.g., Assurances Premium SARL v. Whois Privacy Shield Services / Daisuke Yamaguchi, WIPO Case No. D2016-1425. The Panel agrees and finds that where the Complainant holds a nationally or regionally registered trademark or service mark as of the date of filing its Complaint, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0 at sections 1.1.3 and 1.2.1.
Having met its burden for established trademark rights in the Teva Marks, Complainant next contends that the Disputed Domain Names are identical or confusingly similar to Complainant’s Teva Marks because each of the Disputed Domain Names “directly incorporates Complainant’s [respective] registered trademarks in its entirety which were registered on February 27, 2020”.
For the disputed domain name to be found identical or confusingly similar to each Teva Mark, the relevant comparison is with the second-level portion of each of the Disputed Domain Names, as it is well established that the generic Top-Level Domain (“gTLD”) “.com” may generally be disregarded for this purpose. See WIPO Overview 3.0, section 1.11 (the gTLD as technical requirement for domain name registration is disregarded under the confusing similarity test).
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Panel agrees and notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
The Panel finds that each of Complainant’s Teva Marks is incorporated in its entirety into each corresponding Disputed Domain Name to blatantly render each Disputed Domain Name identical to its respective Teva Mark counterpart in which Complainant has established trademark rights.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate evidence, a complainant is generally deemed to have satisfied the second element under the UDRP. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent here has failed to appear to present any evidence of its rights or legitimate interests in the Disputed Domain Names.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names.
First, Complainant contends that “Respondent bears no relationship to the trademark and the Domain Names has no other meaning except for referring to Complainant’s trademarks and there is no way in which the Domain Names could be used legitimately”. Complainant also asserts and the WhoIs record submitted in the Annex to the Complaint supports, “Respondent who is known by the name Super Privacy Service LTD c/o Dynadot has been a frequent Respondent in UDRP proceedings” having been involved in “at least 142 cases”.
The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register any of the Teva Marks or to register any domain name incorporating any of Complainant’s Teva Marks.
Prior panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed”. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).
Complainant contends Respondent is not commonly known by any of the Disputed Domain Names or the Teva Marks, in accordance with paragraph 4(c)(ii) of the Policy. The Panel finds upon review of the record and evidence submitted by Complainant that Respondent is not commonly known by any or all of the Disputed Domain Names.
Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s Teva Marks or is commonly known by any of the Disputed Domain Names.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 (no rights or legitimate interests when there is no evidence that respondent is commonly known by the domain name).
The Panel accepts Complainant’s contentions that Respondent is not commonly known by the Disputed Domain Names and that Respondent has never been authorized by Complainant to use any of Complainant’s Teva Marks. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant next contends “[t]he fact that Respondent has sought to sell the Domain Names for a substantial sum and registered the Domain Names only three days after Complainant’s US applications for the respective marks further suggests a scheme to derive unfair advantage of the Complainant”. The Panel notes that the record of evidence submitted in the Annexes to the Complaint that each of the Disputed Domain Names resolves “to the auction site dan.com and are listed for USD 990 each”.
Previous UDRP panels have found no rights or legitimate interests in a disputed domain name under circumstances similar to those present here, where the respondent registered a domain name identical to complainant’s mark only three days after complainant filed a trademark application. See Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot, WIPO Case No. D2019-2521. Under strikingly similar circumstances as in the present case, and involving the same Respondent, the panel in Volkswagen Group of America, Inc. held the complainant had satisfied the second element of the policy where Respondent had registered the disputed domain name <drivebigger.com> only three days after the complainant had filed its intent-to-use application for the mark DRIVE BIGGER and then offered it for sale at USD 10,000 via “dan.com”. Under those circumstances the panel found the evidence before it suggested “that Respondent’s intent was to capitalize on Complainant’s nascent trademark rights in DRIVE BIGGER”. Based on those findings the panel went on to hold “given Respondent’s above noted actions and failure to appear, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case”. Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot, supra. The Panel here finds the previous panel’s reasoning persuasive, especially given such similar operative facts evidencing a reprise of previous domain name abuse by the same Respondent.
Additionally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the Disputed Domain names and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b):
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel finds that Respondent has registered and used the Disputed Domain Names in bad faith for at least the following reasons.
First, Complainant contends and has provided persuasive support that Respondent has been involved in a previous UDRP case against Complainant under similar circumstances giving rise to a finding that Respondent is monitoring Complainant’s trademark application filings and targeting them to opportunistically interfere with Complainant’s trademark rights. See, e.g. Teva Pharmaceutical Industries Ltd v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-2835 (bad faith found for presumed interference with trademark rights where domain names <bropairspiromax.com> and <seffalairspiromax.com> registered on same day as Complainant’s filing of its European Union trademark applications).
In finding bad faith, the panel in this previous case, again featuring the same Respondent as present here, was of the view that “Respondent must have been aware of IVAX’s marks, products, since it was closely observing IVAX’s activities with regard to the registration of its trademarks, and registered the disputed domain names presumably to interfere with IVAX’s nascent trademark rights”.
The Panel finds that Respondent’s registration of the Disputed Domain Names with awareness of Complainant and the Teva Marks, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See Royds Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624.
Given that Respondent registered the six Disputed Domain Names three days after Complainant filed a trademark application to register each of the six Teva Marks and did so with a history of repeated targeting of Complainant and a pattern of such abuse in which this Respondent has engaged multiple times in cybersquatting against the trademark rights of this Complainant, it appears more likely than not that Respondent was aware of Complainant’s adoption of the six Teva Marks and sought to opportunistically capitalize on Complainant’s nascent trademark rights in bad faith. See WIPO Overview at section 3.8.2.
In addition, given Respondent’s record of a pattern of bad faith conduct and repeat offenses, the Panel considers the circumstances sufficient to find Respondent targeting Complainant’s Teva Marks in its purchase of the Disputed Domain Names. As described above, the Disputed Domain Names resolve to a web page at “www.dan.com” that offers them for sale at USD 990 each. There can be little question that intentional targeting of Complainant’s marks by Respondent is present where, as here, three days after Complainant filed its application for each of the six Teva Marks, Respondent registered the six Disputed Domain Names identical to each of the Teva Marks. Under these circumstances, the Panel agrees with previous panels and finds the Disputed Domain Names have been registered and used in bad faith.
Respondent has had multiple opportunities to explain and justify how Respondent came to register the Disputed Domain names but has failed to do so. Indeed, the fact that Respondent has chosen to completely conceal its identity and has elected not to appear in this proceeding underscores that Respondent likely has no valid explanation for Respondent’s actions, which to this Panel appears on the evidence submitted to have been undertaken in bad faith. See Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot, supra.
The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the Disputed Domain Names in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <bravayis.com>, <fidalto.com>, <kelvri.com>, <neolesk.com>, <tizaya.com>, and <zelvri.com> be transferred to the Complainant.
Scott R. Austin
Sole Panelist
Date: April 29, 2020
