WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cephalon Inc. v. Ruslan Kapcov

Case No. D2020-1240

1. The Parties

The Complainant is Cephalon Inc., United States of America (“United States” or “US”), represented by SILKA Law AB, Sweden.

The Respondent is Ruslan Kapcov, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <provigilmedication.com> and <provigll.com> are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 27, 2020.

On May 25, 2020, the Center communicated to the Parties the language of the Registration Agreements disclosed by the Registrar is Russian. On May 27, 2020, the Complainant requested the language of the proceeding to be English. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2020.

The Center appointed Taras Kyslyy as the sole panelist in this matter on July 2, 2020. 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.

4. Factual Background

The Complainant was established in 1987 and is currently known as a global biopharmaceutical company. The Complainant is the owner of the PROVIGIL trademark, which is registered in a number of jurisdictions, including United States Trademark Registration No. 2499937 registered on October 23, 2001, and United States Trademark Registration No. 2000231, registered on September 10, 1996.

The Complainant uses its trademark mark in its own domain names such as <provigil.com> and <provigil.us>.

The disputed domain names were registered on March 3, 2019. While <provigll.com> does not direct to any active website, the other disputed domain name <provigilmedication.com> used to direct to a website containing information on PROVIGIL medication in English language. At the time of drafting of the present Decision, the disputed domain name <provigilmedication.com> redirects to a parking webpage.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark in its entirety. The Complainant’s trademark is clearly recognizable in the disputed domain names. The mere addition of the word “medication” only reinforces the (false) association between the trademark and the disputed domain name <provigilmedication.com>. Another disputed domain name <provigll.com> is a typo-domain name, where the Respondent substituted the “i” character in the Complainant’s trademark with similarly looking “l” character. The addition of the generic Top-Level Domain (the “gTLD”) “.com” does not differentiate the disputed domain names from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain names. There is no bona fide offering of goods or services, since the disputed domain names incorporate the Complainant’s trademark, which is not owned by Respondent, nor is the Respondent known by the name “Provigil”. The distinctive name registered by the Complainant as its trademark is not a name one would legitimately choose as a domain name without having specific rights to such name. This name is certainly not a descriptive term serving to indicate specific characteristics of any goods or services. It is evident from the record that the Respondent has not used the disputed domain names for a bona fide offering of goods or services.

The website to which one of the disputed domain names resolves is, designed to lure Internet users in search of its well-known PROVIGIL brand to purchase over the Internet. Complainant has a reason to believe that this is a rogue Internet pharmacy that does not comply with the laws and regulations of many countries in which it operates. The Respondent is not making a fair use of the disputed domain names, as the Respondent has used the disputed domain names, which are based on the Complainant’s trademark, to make unauthorized sales of PROVIGIL products for the Respondent’s own profit. The other disputed domain name is connected to an inactive site.

The disputed domain names were registered and are being used in bad faith. The Respondent has used the disputed domain names in bad faith as the Respondent has knowingly registered a confusingly similar disputed domain names, that consist of the PROVIGIL mark, in order to divert Internet users to the Respondent’s website that purports to be selling the Complainant’s products. The websites suggest an affiliation with or endorsement by the Complainant, and that, as a result, Internet users are likely to mistakenly believe that the products promoted and advertised on the website at the disputed domain names are provided by or sponsored by the Complainant. The Respondent was clearly aware of the Complainant when registered the disputed domain names, since they fully incorporate the Complainant’s trademark and given that the website at one of the disputed domain names promotes the unauthorized sale of PROVIGIL products. As one of the disputed domain names links to an inactive website, it would not prevent a finding of bad faith under the doctrine of passive holding.

The Respondent is using a privacy shield. Although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. A motive for using a domain privacy service in this instance has been to increase the difficulty for the Complainant of identifying the Respondent, which does not reflect good faith. It is highly unlikely that the Respondent was not aware of the registered rights the Complainant in its trademark.

The Respondent bears no relationship to the Complainant’s trademark and the disputed domain names have no other meaning except for referring to Complainant’s name and trademark and there is no way in which the disputed domain names could be used legitimately.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreements for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. General Energy a/k/a Edison GE GEEEEGE.COM a/k/a Edison-GE and Edison Electric Corp., WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), prior UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain names are in ASCII characters, (ii) one of the disputed domain names contains an English word, such as “medication”, and (iii) the content of the Respondent’s website is entirely in English. The Complainant also believes that it would be in fairness to both Parties for the proceeding to be held in English.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain names incorporate the Complainant’s trademark and are therefore confusingly similar to it.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of the word “medication” in the disputed domain name <provigilmedication.com> does not prevent the confusing similarity to the Complainant’s mark.

According to section 1.9 of the WIPO Overview 3.0, a domain name, which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel finds that the disputed domain name <provigll.com> consists of an intentional misspelling of the Complainant’s trademark replacing “i” with the similar looking “l”, which does not prevent the confusing similarity between the two.

Considering the above, the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

According to section 2.8.1 of the WIPO Overview 3.0 resellers or distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods at issue;

(ii) the respondent must use the site to sell only the trademarked goods;

(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.

The Panel finds that in regard of the <provigilmedication.com> disputed domain name the Respondent failed to satisfy at least the first and the third of the above requirements and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the <provigilmedication.com> disputed domain name cannot be considered bona fide.

Based on the nature of the <provigll.com> disputed domain name, being a typosquatted version of the Complainant’s mark, the fact that it does not resolve to an active website, and the use of the <provigilmedication.com> disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in the <provigll.com> disputed domain name (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent’s use of one of the disputed domain names to purport to sell the Complainant’s product shows that at the time of the registration of the disputed domain names the Respondent clearly knew and targeted Complainant’s prior registered trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.

In this regard, the Panel finds that at least the fourth of the above scenarios applies to the present case confirming the Respondent’s bad faith.

Although at the time of this Decision the disputed domain names resolve to inactive webpages, the previous use of the <provigilmedication.com> disputed domain name and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain names implausible. Thus, the current passive holding of the disputed domain names does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <provigilmedication.com> and <provigll.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: July 15, 2020