PARTIES' CONTENTIONS:
COMPLAINANT:
Complainant ("Teva") is a leading global pharmaceutical company that is committed to increasing access to high-quality healthcare for people across the globe, at every stage of life, by developing, producing and marketing affordable generic drugs as well as innovative and specialty pharmaceuticals and active pharmaceutical ingredients.
1. <copaxoneclick.com>
Teva's Copaxone is indicated for treatment of patients with relapsing forms of multiple sclerosis. More information is available at http://www.copaxone.com. As of at least its latest annual report, Teva's Copaxone remained the leading multiple sclerosis therapy in the United States and worldwide. Daily COPAXONE has been approved in more than 50 countries worldwide, including the U.S.and all European Countries. Teva owns a family of Copaxone registrations, including a stand-alone registration for COPAXONE in the United States, U.S. Reg. No. 1,816,603 (the "'603 Registration'"), issued in 1994 with priority since 1993, in Class 5. European trademark rights in COPAXONE standing-alone include EUTM 002183986 in Class 5, issues in 2002. Id. Teva also has a family of registered COPAXONE marks combined with other terms, such as COPAXONE WEBTRACKER, COPAXONE iTRACKER, and ORAL COPAXONE, evidenced in the WIPO Global Brand Database.
On November 22, 2016, Teva filed a new application for COPAXONE CLICK in Class 5 before the United States Patent and Trademark Office. Three days later on November 25, Respondent registered <copaxoneclick.com> with GoDaddy.
The domain name <copaxoneclick.com> incorporates the entirety of Teva's COPAXONE trademark. Adding a dictionary word such as 'Click' to a fanciful mark such as COPAXONE does not negate confusing similarity between the disputed domain name and the COPAXONE trademark in which Teva has enforceable rights. Therefore, the disputed domain name <copaxoneclick.com> is confusingly similar to a trademark in which Teva has established rights.
Teva did not authorize, contract, license or otherwise permit Respondent to register or use the COPAXONE mark. Respondent is not a vendor, supplier, or distributor of Teva's COPAXONE, has no trademark rights in COPAXONE, and is not commonly known as COPAXONE, or by the domain name <CopaxoneClick.com>. Respondent has no legitimate interest in the disputed domain name <copaxoneclick.com>.
Furthermore, the disputed domain name <copaxoneclick.com> contains the entirety of Teva's COPAXONE mark, which does not have a dictionary meaning. The implication arising in the mind of the Internet user is that Respondent is either, or in some associated with, Teva. The disputed domain resolves to a "website coming soon page," which is akin to passive holding. E.g., WIPO Case No. D2016-2517. This constitutes bad-faith registration and use. Furthermore, bad-faith may be inferred from the timing of when the domain name was registered in relation to the newly filed application for a Copaxone mark by Teva incorporating the exact additional element CLICK that Respondent registered together with COPAXONE only three days earlier. This is hardly a coincidence and is clear evidence of Respondent's bad-faith intent in registering the domain name to profit from its trademark significance.
2. <ajovy.com>, <cenmira.com>, <pernuvi.com>, <remfaso.com>
Furthermore, Teva has trademark rights in AJOVY, CENMIRA, PERNUVI, and REMFASO. Complaint owns Benelux registration number 1006242 for AJOVY, 1006232 for CENMIRA, 1006174 for PERNUVI, and 1006175 for REMFASO, all in Class 5 covering pharmaceutical preparations as more fully set forth in the Registration Certificates provided by Complainant. Panels have consistently held that the timing or location of the trademark registrations in relation to the creation of the disputed domain names is irrelevant under paragraph 4(a)(i) of the Policy because the UDRP makes no specific reference to the date on which the trademark owner acquired the rights or where those rights exist. E.g., WIPO Case No.D2009-0239 (<rb.net>) (internal citations omitted); see also the WIPO Overview 2.0, the first section 1.1 and references cited for the consensus view.
The disputed domain names <ajovy.com>, <cenmira.com>, <pernuvi.com>, and <remfaso.com> are all identical to the corresponding marks in which Teva has established rights. Much like with <copaxoneclick.com>, Teva also did not authorize, contract, license or otherwise permit Respondent to register or use these disputed domain names. Respondent is not a Teva vendor, supplier, or distributor of any of its pharmaceutical preparations, and Respondent has no trademark rights in AJOVY, CENMIRA, PERNUVI, or REMFASO. Respondent is also not commonly known by these marks, or by the <ajovy.com>, <cenmira.com>, <pernuvi.com>, and <remfaso.com> disputed domain names. Respondent has no legitimate interest in them, and there is no evidence of Respondent's use of any of the disputed domain names in connection with a bona fide offering of goods or services, nor any evidence of legitimate non-commercial or fair use without intent for commercial gain.
At the time the Complaint was submitted to the Provider, Respondent was using the <ajovy.com>, <cenmira.com>, <pernuvi.com>, and <remfaso.com> disputed domain names to display Sponsored Listings and general commercial advertisements, for which as the registrant that controls the domain names, Respondent is responsible. Some of the commercial listings included specifically prescription medications in Class 5 that are by definition as pharmaceuticals, highly related to the pharmaceutical preparations in Teva's registrations, such as an ad for SUBOXONE® Sublingual Film www.suboxone.com (buprenorphine and naloxone). This type of competitive use cannot possibly be bona fide or a legitimate noncommercial or fair use under the Policy par. 4(c)(iii). The ad-infested parking pages in use on these disputed domain names took unfair advantage of the marks' goodwill for purposes of deriving PPC revenue, which also negates any argument that the disputed domain names were being passively held for a legitimate use in the future. Use of these disputed domain names constitutes unfair use, resulted in misleading diversion, which does not establish rights or a legitimate interest.
The fact that after the Complaint was submitted to the Provider, Respondent disconnected the disputed domain names from live content is irrelevant, and does not establish rights or a legitimate interest in the disputed domain names. Moreover, all of the disputed domain names are using the same mail server. There is no legitimate interest in Respondent sending emails likely to deceive people into thinking they come from the trademark owner.
The bad-faith registration and use of these disputed domain names is exemplified by the timing of their creation in relation to the filings by Teva with the USPTO.
AJOVY U.S. Trademark filng, Tue Nov 15 13:08:39 EST 2016, <ajovy.com>, created 2016-11-18T12:20:36Z,
CENMIRA U.S. Trademark filng, Tue Nov 15 13:07:22 EST 2016, <cenmira.com>, created 2016-11-18T12:20:02Z
PERNUVI U.S. Trademark filng, Tue Oct 18 14:32:10 EDT 2016, <pernuvi.com>, created 2016-10-21T12:47:04Z
REMFASO U.S. Trademark filng, Tue Oct 18 14:33:27 EDT 2016, <remfaso.com>, created 2016-10-21T12:47:05Z
Like with <CopaxoneClick.com>, this constitutes a bad-faith pattern and practice of registering domain names within three days after Teva filed for its trademarks, which under these facts, clearly shows the intent is to take commercial advantage from the trademark significance of the disputed domain names, primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to Teva or to a competitor for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain names, or to prevent Teva from reflecting its marks in corresponding domain names. It is inconceivable that Respondent did not have Teva's marks in mind when registering these domain names, and the actions suggest opportunistic bad faith.
Finally, Respondent's bad-faith is exemplified by the false contact information used by Respondent. For instance, the postal code and street in Hong Kong used by Respondent in first registering the disputed domain names is inaccurate. <cenmira.com> and <ajovy.com> were moved to an alias using a postal code that does not exist within Chongqing, <remfaso.com> and <pernuvi.com> were also moved to an alias using a different postal code that does not exist within Heilongjiang, and finally, <copaxoneclick.com> was move to an alias adopting the name of a television personality in China using a completely fictitious address. The false contact information should be verifiable when the Czech Arbitration Court sends the Amended Complaint by mail to these addresses--they will likely be returned undeliverable.
In summary, Teva has shown that all of the disputed domain names are identical or confusingly similar to trademarks in which it has established rights, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and all of them were registered and are being used in bad faith.
RESPONDENT:
Respondent submitted a very brief statement, in the Chinese language, stating, in essence, “Want to extend the case, plus want to please Cantonese written. Also want to have my own case, not with other users who mention it. Not affiliated with Godaddy with other users.”
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