Decisión del Panel Administrativo nº D2021-1705 of WIPO Arbitration and Mediation Center, September 16, 2021 (case Teva Pharmaceutical Industries Ltd. and Auspex Pharmaceuticals, Inc. v. Registration Private, Domains By Proxy, LLC / Elan Katz, Katz Ventures)
| Resolution Date | September 16, 2021 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainants are Teva Pharmaceutical Industries Ltd., Israel, and Auspex Pharmaceuticals, Inc., United States of America (“United States” or “US”), represented by SILKA AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Elan Katz, Katz Ventures, United States.
The disputed domain names [austedorx.com] and [copaxonerx.com] (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 13, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Along with the Complaint, the Complainants have filed a Request to Consolidate, with reference to Paragraph 10(e) of the UDRP Rules which provides that a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The first Complainant, Teva Pharmaceutical Industries Ltd., was established in 1935 and is a leading global pharmaceutical company that delivers patient-centric healthcare solutions used by millions of patients every day. The Complainant was the world’s largest generic medicines producer in 2018, leveraging a portfolio of more than 1,800 molecules to produce a wide range of generic products in nearly every therapeutic area. In specialty medicines, the Complainant has a world-leading position in innovative treatments for disorders of the central nervous system, including pain, as well as a strong portfolio of respiratory products. The first Complainant ranks among the leading pharmaceutical companies in the world and is active in over 60 countries and employs approximately 42,000 people around the world. Among the pharmaceutical products sold by the First Complainant, there is a prescription medicine for treatment of relapsing forms of multiple sclerosis, sold under the trade mark COPAXONE. This medicine has been available in the United States since 1996 and in the European Union (“EU”) since 2001 and the first Complainant hosts a website that displays information about this medicine under the domain name [copaxone.com].
In May 2015, the first Complainant acquired the company of the second Complainant, Auspex Pharmaceuticals, Inc. This company is specialized in applying deuterium chemistry to known molecules to create novel therapies with the potential for improved safety and efficacy profiles. One of the pharmaceutical products developed by the second Complainant is sold under the trade mark AUSTEDO, a prescription medicine that is used to treat the involuntary movements characteristic of Huntington’s disease. The second Complainant hosts a website that displays information about this medicine under the domain name [austedo.com].
The first Complainant, Teva Pharmaceuticals Industries Ltd. holds inter alia the following trade marks consisting of COPAXONE (the “COPAXONE Trade Marks”):
- EU word mark registration No. 002183986 COPAXONE, registered on June 17, 2002;
- US word mark registration No. 1816603 COPAXONE, registered on January 18, 1994.
The second Complainant, Auspex Pharmaceuticals, Inc. holds inter alia the following trade marks consisting of AUSTEDO (the “AUSTEDO Trade Marks”):
- US word mark registration No. 5223588 AUSTEDO, registered on June 13, 2017.
- US device mark registration No. 5223589 AUSTEDO, registered on June 13, 2017.
- EU device mark registration No. 014585401 AUSTEDO, registered on February 10, 2016.
The Respondent, Elan Katz, Katz Ventures has registered the Domain Name [copaxonerx.com] on March 2, 2021 (the “Copaxonerx Domain Name”), and the Domain Name [austedorx.com] on February 8, 2021 (the “Austedorx Domain Name”).
According to its website under the domain name [katzventures.com], the Respondent is active in “Healthcare & Real Estate Investments”. The website contains, inter alia, links to the websites of, inter alia, QuickRX pharmacy, Cure Urgent Care, and Specialty Infusion Centres, companies in which the Respondent apparently invests.
By email of March 26, 2021, the second Complainant, Auspex Pharmaceuticals, Inc. sent a cease and desist letter to the Respondent, to which no response was received.
Consolidation
The Complainants have filed a Request to Consolidate multiple domain name disputes, both with respect to the Complainants and the Respondents.
The Complainants have pointed out that Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“[WIPO Overview 3.0]”) establishes that:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At...
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