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Implausibility of Defensive Proof to Complainant’s Demand for Transfer of Domain Name

It is incongruous to combine words drawn from different languages to create a domain name in which the dominant word is identical to a complainant’s trademark. In Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator, D2010-0532 (WIPO May 28, 2010) the Respondent combined the English word, “my”, with a transliteration of a Hebrew word, “Teva” to form <myteva.com>. Generally, combinations preceded by “my” have not fared well. Some explanation is expected if the respondent is to prevail. For example, Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, D2005-0410 (WIPO June 12, 2005) (<mysouthwest.com>): “a complainant’s adoption of a common geographically descriptive term for its service mark “faces a greater risk that the combination of that term with another common term will in fact distinguish the new combination.”

While “Teva” is a common term in Hebrew, its currency appreciates in its transliterated form as a trademark. In defense, the Respondent in Teva Pharmaceutical tried a number of tacks: that it had no knowledge of the Complainant or its trademark when it registered the domain name; that the dominant word corresponded with the manufacturer of sandals; that the dominant word was the name of a sporting event; that the transliteration was a common dictionary word meaning “nature.” In the Panel’s view

[w]hile the term “teva” might have meaning in Hebrew, there was no evidence that it has any meaning in English. The Panel does not consider that an ordinary Internet user would see the combination “myteva” and naturally think that the first word was used with its English meaning, while the second was used with its Hebrew meaning…. This suggests that the term “teva” in this context would be looked at for its trademark significance, rather than any generic meaning it might have in Hebrew, or otherwise.

The Respondent’s explanations were inconsistent. The content of the Respondent’s website is entirely in English. It “provided no evidence of it having any connection with ‘the Teva Mountain Games’, or any demonstrable preparations to use the disputed domain name in connection with shoes, notwithstanding the fact that as of the date of this Decision, the disputed domain name resolves to a website which concerns Teva footwear.” Indeed, the reference to Teva footwear was clearly an afterthought invented for the occasion because it only appeared on the webpage after the Respondent received the complaint. Images of the webpages captured prior to the change displayed sponsored links relating to the pharmaceutical industry, the Complainant’s industry. “The Respondent’s assertion in its Response that the website at the disputed domain name is the ‘original site that was developed in 2008′ is without factual support and does not overcome the Complainant’s prima facie case.”

Caught prevaricating is not helpful to any party. Here,

[t]he Respondent’s inability to demonstrate any legitimate interest in the disputed domain name, and the internal inconsistency of its explanations for why it registered the disputed domain name, further support a finding against it on this ground.

The Respondent complained that “it made no meaningful financial gain from pay-per-click revenue.” This is both irrelevant, nonsense as a defense and, curiously, an admission that the Respondent’s purpose was to create a stream of income which would violate paragraph 4(b)(iv) of the Policy.

Gerald M. Levine  <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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