Decision for dispute CAC-UDRP-108243

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of numerous trademark registrations for TEVA and TEVA-formative marks across the world, including the following:

• International trademark registration No. 1319184, registered on June 15, 2016;
• China trademark registration No. 12190529, registered on August 7, 2014;
• European Union trademark registration No. 000115394, registered on April 29, 1998;
• United Kingdom trademark registration No. 00001369112, registered on August 17, 1990;
• Mexico trademark registration No. 417998, registered on July 6, 1992; and
• U.S. trademark registration No. 1567918, registered on November 28, 1989.

The Complainant is a global pharmaceutical company focused on delivering high-quality, patient-oriented healthcare solutions. It was incorporated in Israel on February 13, 1944. Today, the Complainant ranks among the world’s leading producers of generic medicines, discovering, developing and delivering innovative generic and biosimilar medicines. The company operates in 57 countries and generated revenues exceeding USD16.5 billion in 2024. The company has an employee count of about 37,000.

The Complaint states that Mexico plays a key role for the Complainant in its positioning and development in Latin America, with annual sales of USD100 and a workforce of 700 employees. From 2021-2024, the Complainant grew by an average of 25% per year in Mexico, which is significant, considering that the overall expansion of the Mexican pharmaceutical market in recent years has been between 5%-6%.

The Complainant maintains an online presence through the domain name <tevamexico.com.mx>, amongst others, which was registered on June 28, 2005. The Complainant has its own podcast and an intense social media presence in Mexico.      

The Respondent registered the disputed domain name on July 27, 2024. At the time of filing the Complaint, the disputed domain name resolved to a webpage providing streaming content which display promotional banners for, inter alia, betting websites.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

LANGUAGE OF THE PROCEEDINGS

The language of the registration agreement is Chinese.

The Complainant has requested that the language of proceedings be English for a variety of reasons. These include:

• The disputed domain name consists entirely of Latin alphabet characters rather than Chinese script, and incorporates the English country name, “Mexico”, which shows that the Respondent is familiar with the English language;

• The Complainant is domiciled in Israel and represented by Swedish counsel. Neither has knowledge of the Chinese language, whereas English is widely used in international affairs; and

• To conduct the proceeding in Chinese, the Complainant would have to incur costs for translation which exceed the overall cost of this proceeding. This would impose a disproportionate burden on the Complainant and delay the proceeding.

Having considered these points and the circumstances of this case, the Panel has decided that it would be fair and equitable to all parties to adopt English as the language of the proceedings. Furthermore, the Respondent did not respond on the issue of the language to the proceedings and did not object to the Complainant’s request.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trade mark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in the TEVA trade mark. The Panel agrees with earlier panel decisions that TEVA is a well-known trade mark.

The disputed domain name contains the entirety of the Complainant’s TEVA trade mark with the addition of the suffix “-mexico“. The Complainant’s TEVA trade mark is recognizable within the disputed domain name. The addition of the geographical term and hyphen, “-mexico”, does not prevent a finding of confusing similarity but in fact adds to the confusion with the Complainant’s trade mark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent holds trademark rights in the terms “teva-mexico” or “teva mexico”, or that the Respondent has been commonly known by the disputed domain name. The Respondent has no affiliation or connection with the Complainant and has not been granted any licence to use the TEVA trade mark in any manner.

The Panel does not find the Respondent’s manner of use of the disputed domain name to be fair use. As is stated in the WIPO Overview 3.0 at section 2.5.1, “generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. The Panel finds this to be the case, since the adoption of the distinctive “TEVA” trade mark in the disputed domain name and addition of the geographical name, Mexico, carries a high risk of implied affiliation with the Complainant.  

The Respondent did not submit a formal Response and did not provide any explanation or evidence to show he has rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)).

The TEVA mark is a distinctive and well-known trade mark, having been registered and used for many years, with an extensive global reputation. The trade mark is exclusively associated with the Complainant and it would be hard to conceive of any good faith registration and use of the disputed domain name which incorporates the TEVA mark. The Panel agrees with the Complainant that it is not plausible that the Respondent was unaware of the Complainant and its TEVA trade mark when he registered the domain name, also given the fact the Complainant already owns the domain names <tevamexico.com.mx> and <tevamexico.com>. A search via Google would have revealed to the Respondent the existence of the Complainant and its rights in the TEVA mark.

The Panel draws an inference of bad faith from the fact that the disputed domain name contains the well-known TEVA trade mark and the Respondent’s failure to respond in this proceeding. It concludes that the circumstances described in paragraph 4(b)(iv) of the Policy applies in this case, viz:

           “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to   its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location”.

 The Panel therefore concludes that the disputed domain name was registered and used in bad faith.