TEVA Pharmaceutical Industries Ltd. v. Inbal Sasson
Claim Number: FA1208001457898
Complainant is TEVA Pharmaceutical Industries Ltd. (“Complainant”), represented by Daniel I Schloss of Greenberg Traurig, LLP, New York, USA. Respondent is Inbal Sasson (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz>, registered with 1 & 1 INTERNET AG.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2012; the National Arbitration Forum received payment on August 13, 2012.
On August 15, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz> domain names are registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the names. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tevaseiyaku.com, postmaster@tevaseiyaku.net, postmaster@tevaseiyaku.org, postmaster@tevaseiyaku.biz, postmaster@tevaseiyaku.info, postmaster@teva-seiyaku.net, postmaster@teva-seiyaku.org, and postmaster@teva-seiyaku.biz. Also on August 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 4, 2012.
An Additional Submission from Complainant was received on September 6, 2012. The Additional Submission complied in all respects with Supplemental Rule 7, and the Panel will consider it in the decision rendered below.
On September 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Established in 1901, Complainant has grown to become a world famous source of pharmaceutical and related products. Complainant has used the TEVA trademark since at least its incorporation on February 13, 1944. As one of the top 15 pharmaceutical companies in the world, Complainant had sales in 2011 of more than USD$18 Billion worldwide, including USD$8.8 Billion in the United States.
- Among its numerous trademark registrations for the TEVA mark, Complainant has such registrations with the United States Patent and Trademark Office (“USPTO”) and Israel Patent Office (“IPO”). Moreover, Complainant uses that mark in domain names, including <tevausa.com> and <tevapharm.com>.
- Complainant operates in Japan as one of the three largest suppliers of generic pharmaceuticals and owns the domain name, <teva-seiyaku.com>. The term “teva pharmaceuticals” translates into “teva seiyaku” in Japanese.
- After discovery of the disputed domain name registrations in May 2012, Complainant sent a letter by registered mail and e-mail to Respondent demanding transfer of the disputed domain names. Respondent failed to reply.
- The disputed domain names, <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz>, are confusingly similar to Complainant’s TEVA trademark. The additional term “seiyaku” – Japanese for pharmaceuticals – does not provide any distinction, especially since Complainant markets pharmaceutical products.
- Respondent has no rights or legitimate interests in the disputed domain names. Complainant has given Respondent no permission to use Complainant’s mark. Respondent is not commonly known as any of the disputed domain names. Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or in connection with legitimate noncommercial or fair use purposes.
- The disputed domain names resolve to websites that display pay-per-click links to third-party websites, some of which offer the sale of pharmaceuticals in direct competition with Complainant.
- Respondent registered and is using the disputed domain names in bad faith, as Respondent had actual or constructive knowledge of Complainant’s rights in the TEVA trademark at the time the disputed domain names were registered.
- Respondent is attempting intentionally to gain commercially from the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites found at the disputed domain names.
B. Respondent
- Respondent, a resident of Florida, purchased the domain names because they have special spiritual meaning to him as he is religious.
- Respondent was unaware of Complainant when the disputed domain names were registered.
- Respondent was unable to register a domain name that corresponded to the name of his company because that domain name was owned by someone who demanded a purchase price of USD$10,000.
- Respondent is willing to sell the disputed domain names to Complainant.
C. Complainant’s Additional Submission
- Complainant issued a press release announcing its Japanese subsidiary, “Teva Seiyaku, Inc.,” on November 17, 2011, following Complainant’s registration of the domain name, <teva-seiyaku.com>, on October 27, 2011. Respondent’s registration of the disputed domain names after said release and domain name registration is suspicious and indicative of bad faith.
- Complainant is unaware of any spiritual connotation connected to the term “teva seiyaku,” and Respondent has provided no evidence supporting why that term has a spiritual meaning to him.
- Respondent is located in a jurisdiction, the United States, where Complainant’s trademark registration predates registration of the disputed domain names, leading to the inference that Respondent was aware or had at least constructive knowledge of Complainant’s well-known TEVA mark.
- The Response implies that Respondent’s purpose in registering the disputed domain names was to sell them for a relatively large sum of money, a further indication of Respondent’s bad faith.
Complainant is a company based in Israel that is a well-known worldwide supplier of pharmaceutical products. Complainant owns a Japanese subsidiary named, “Teva Seiyaku, Inc.” Complainant also owns registrations for the TEVA trademark with the USPTO (e.g., Reg. No. 1,567,918; issued Nov. 28, 1989) and the IPO (e.g., Reg. No. 41,075; issued Aug. 5, 1975). Complainant also registered the domain name, <teva-seiyaku.com>, on October 27, 2011.
Respondent owns the disputed domain names, <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz>, which were registered on December 19, 2011. The disputed domain names resolve to websites that feature links to third-party websites, some of which offer pharmaceutical products that compete with Complainant’s goods.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Consistent with the overwhelming consensus of prior Policy opinions, the Panel finds that the evidence submitted by Complainant (Exhibit C), which substantiates its valid USPTO and IPO trademark registrations for the TEVA mark, confirms Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Complainant contends that all of the disputed domain names are confusingly similar to the TEVA mark. In making its argument, Complainant has convinced the Panel that the term, “seiyaku,” is Japanese for the English language word “pharmacy” or “pharmaceuticals,” which refers to the products that Complainant markets worldwide. Therefore, the Panel has no trouble in determining that the disputed domain names, <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz>, are indeed confusingly similar to the TEVA mark, in that they all fully incorporate that mark in combination with the aforesaid descriptive term, “seiyaku,” which relates directly to Complainant’s business. In making such a determination, the Panel notes that the inclusion in the disputed domain names of various gTLDs, (i.e., “.com,”.net,” “.org,” “.info” or “.biz”) and, in some cases, a hyphen between the two terms does not mitigate said confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the disputed domain name, <aigassurance.com>, from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Hewlett-Packard Co. v. URLPro2000, FA 147314 (Nat. Arb. Forum Apr. 14, 2003) (finding <deskjet-support.com> to be confusingly similar to the DESKJET mark); see also InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 4, 2000) (finding the disputed domain, <info-space.com>, to be confusingly similar to the mark, INFOSPACE, while noting, “[t]he addition of a hyphen and .com are not distinguishing features”).
As a result, the Panel concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names and has put forth a prima facie case in support of that contention, to wit: those names are confusingly similar to Complainant’s TEVA trademark; and Complainant has granted no permission or license for Respondent to use that mark. Consequently, to prevail on this issue, Respondent must come forward with rebuttal evidence. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”): see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent’s rather minimal Response in these proceedings provides the Panel with little evidence to counter Complainant’s prima facie case. Respondent asserts that his registration of the disputed domain names occurred due to Respondent’s spiritual affinity for them. However, the Response furnishes neither a scintilla of evidence to support that claim, nor any evidence that the disputed domain names are used to promote any spiritual undertakings. On the contrary, Complainant has provided the Panel with hard evidence (Exhibit E) that all of the disputed domain names host websites that provide links to third-party websites, some of which offer pharmaceutical products that compete with those marketed by Complainant.
Moreover, the Panel agrees with Complainant that it is more than likely that Respondent derives pay-per-click (“PPC”) revenue from such use of the disputed domain names. In accordance with the consensus of previous UDRP rulings, the Panel finds that said PPC use of the disputed domain names is neither “a bona fide offering of goods or services” per Policy ¶ 4(c)(i) nor “a legitimate noncommercial or fair use” of the disputed domain names per Policy ¶ 4(c)(iii). See Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008) (“It is by now well established that PPC parking pages built around a trademark . . . do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii)”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (“Respondent’s use of a domain name confusingly similar to Complainant’s EXPEDIA.COM mark to redirect Internet users to websites offering products and services in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Respondent has not claimed, and there is no evidence in the record to suggest, that he, identified as “Inbal Sassoon” by Whois information, has been commonly known as any combination of the terms “teva” and “seiyaku.” Moreover, although Respondent alludes to owning a small company, he has not bothered to disclose the company’s name and has proffered no evidence that it is commonly known as any of the disputed domain names. As such, the Panel perceives no reason to invoke Policy ¶ 4(c)(ii) on Respondent’s behalf.
Thus, the Panel determines that, since the criteria cited in Policy ¶ 4(c) are inapplicable and no other effective rebuttal evidence has been submitted by Respondent, Complainant’s prima facie showing must prevail on this issue.
As a result, the Panel concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent claims that he is a religious man, and the Panel has no reason to doubt that claim. However, the Panel believes that, religious or not, Respondent is a classic cybersquatter. The record is clear that Respondent registered the disputed domain names, <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz>, on December 19, 2011, i.e., soon after Complainant registered the domain name, <teva-seiyaku.com> (October 27, 2011), and announced the formation of its subsidiary, “Teva Seiyaku, Inc.” (November 17, 2011). To believe that these actions occurred coincidentally strains credulity. It appears to the Panel that Respondent, with no apparent rights or legitimate interests in the disputed domain names, has clearly acted in opportunistic bad faith.
Also, it is evident to the Panel that, as contended by Complainant, Respondent seeks to gain financially through its use of the disputed domain names by virtue of the PPC links found at the websites that he has attached to those names. It is obvious to the Panel that Respondent knows and intends that Internet users will be attracted to the disputed domain names because of the likely confusion between them and Complainant’s well-known TEVA trademark. Moreover, confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s websites is compounded because some of the linked, third-party websites offer products that compete with those offered by Complainant. These circumstances persuade the Panel that Respondent registered and is using the disputed domain names in bad faith per Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Caesars Entm’t, Inc. v. Infomax, Ltd., D2005-0032 (WIPO Mar. 6, 2005) (“The Panel is satisfied that the Respondent is intentionally using the Domain Name to attract internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark, and that the Respondent gains commercially from such confusion by receiving “click-through” commissions. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”).
As a result, the Panel concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tevaseiyaku.com>, <tevaseiyaku.net>, <tevaseiyaku.org>, <tevaseiyaku.biz>, <tevaseiyaku.info>, <teva-seiyaku.net>, <teva-seiyaku.org>, and <teva-seiyaku.biz> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: September 21, 2012
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