national arbitration forum

 

DECISION

 

TEVA Pharmaceutical Industries Ltd. v. Kevin Wall

Claim Number: FA1302001483227

PARTIES

Complainant is TEVA Pharmaceutical Industries Ltd. (“Complainant”), represented by Daniel I. Schloss of Greenberg Traurig, LLP, New York, USA.  Respondent is Kevin Wall (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tevarx.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.

 

On February 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tevarx.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2013 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@tevarx.com.  Also on February 11, 2013, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <tevarx.com> domain name, the domain name at issue, is confusingly similar to Complainant’s TEVA mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant, TEVA Pharmaceutical Industries Ltd., is one of the top 15 pharmaceutical companies in the world with operations in 60 countries and is a leading specialty pharmaceuticals innovator and prominent global pharmaceutical ingredients supplier. Complainant makes use of its TEVA marks on the Internet, including in the domain names and website content for Complainant’s websites located at <www.tevausa.com>.  Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TEVA mark (e.g., Reg. No. 1,567,918, registered November 28, 1989).

 

Respondent’s <tevarx.com> domain name is confusingly similar to Complainant’s TEVA mark as it incorporates in its entirety Complainant’s well-known and distinctive TEVA mark. The addition of the term “Rx” does not negate any confusing similarity between the domain name and the mark TEVA. Respondent is not commonly known by the disputed domain name.  It is evident that Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s TEVA marks. Respondent has actual or at least constructive notice of Complainant’s well-known TEVA marks.

 

DISCUSSION

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 must 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant is one of the top 15 pharmaceutical companies in the world with operations in 60 countries and makes use of the TEVA marks on the Internet, including in the domain names and website content for Complainant’s websites located at <www.tevausa.com>. Complainant is the owner of trademark registrations with the USPTO for the TEVA mark (e.g., Reg. No. 1,567,918, registered November 28, 1989).  Respondent appears to reside within the United States.  Complainant’s registration of the TEVA mark with the USPTO sufficiently establishes its rights pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <tevarx.com> domain name is confusingly similar to Complainant’s TEVA mark as it incorporates in its entirety Complainant’s well-known and distinctive TEVA mark.  The addition of the term “Rx” does not negate any confusing similarity between the domain name and the mark TEVA.  The generic term “Rx” means “prescription” and directly refers to the business for which Complainant and the TEVA marks are famous. The addition of a generic or descriptive term does not negate confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).  Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name, but attaching a gTLD is inconsequential pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <tevarx.com> domain name is confusingly similar to Complainant’s TEVA mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).

 

The Panel notes that the WHOIS information identifies “Kevin Wall” as the registrant of the disputed domain name and that Respondent does not provide additional evidence showing that it is commonly known by the domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Thus, Respondent is not commonly known by the <tevarx.com> domain name.

 

Respondent is not using the domain name for a bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the disputed domain name. Respondent has generated revenue by trading upon the valuable goodwill and reputation generated by the TEVA mark by misleading consumers into believing Respondent’s websites, as well as the content and products linked to from therein, are affiliated with or endorsed by Complainant and by misdirecting Internet traffic from Complainant’s legitimate websites.  Respondent’s disputed domain name resolves to a website that features links to “HEALTH INFO MGMT PROGRAMS,” “FREE ONLINE CLE,” “COMPANY INFORMATION,” and others. The Panel finds that Respondent’s use of the disputed domain name to link to third-party websites is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

It is evident that Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s TEVA mark.  Respondent’s disputed domain name resolves to a website that features links to “HEALTH INFO MGMT PROGRAMS,” “FREE ONLINE CLE,” “COMPANY INFORMATION,” and other competing links. Because Respondent is intentionally attracting Internet users to the website at the disputed domain name for its own commercial gain, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to 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).”).

 

Respondent has actual or at least constructive notice of Complainant’s well-known TEVA marks. Respondent is located in a jurisdiction in which Complainant has registered trademark rights. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tevarx.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  March 27, 2013

 

 

 

 

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