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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cephalon Inc. v. Margarita Pilan

Case No. D2020-0931

1. The Parties

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

The Respondent is Margarita Pilan, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <provigilpro.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 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 April 28, 2020.

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 April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 4, 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 is the owner of the PROVIGIL trademark which is registered in a number of jurisdictions in relation to pharmaceuticals, see for example United States Trademark Registration No. 2499937 registered on October 23, 2001, and United States trademark No. 2000231, registered on September 10, 1996. The Complainant is also the owner of the Chinese trademark registration for PROVIGIL No. 11308589 registered on January 7, 2014, and holds the European Union trademark registration 3508843 for PROVIGIL in relation to Nice class 5 goods (registered on March 25, 2008). The Complainant has been successful in several previous UDRP disputes.

The online pharmacy-style website to which the disputed domain name resolves is designed to lure consumers in search of PROVIGIL products, and includes a link to another website where a substantial number of unrelated branded pharmaceuticals are offered for sale on website.

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

The disputed domain name was registered on October 11, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant is a wholly owned subsidiary of Teva Inc. and the product it markets under the mark PROVIGIL is part of Teva’s line of central nervous system pharmaceuticals. The Complainant contends that its PROVIGIL mark is well known within its specialty area. The Complainant uses its mark in its own domain names, as indicated above.

The Complainant says that the disputed domain name directly incorporates the Complainant’s registered trademark in its entirety. That trademark is said to be clearly recognizable and constitutes the first part of the disputed domain name. The mere addition of the term “pro” only reinforces the false association between the trademark and the disputed domain name, according to the Complainant.

Further, the Complainant asserts that there is no bona fide offering of goods or services where a disputed domain name incorporates a trademark, which is not owned by a respondent. The Respondent in this matter is not known by the name “Provigil”. The distinctive mark PROVIGIL is not a name one would legitimately choose as a domain name without having specific rights to it, the Complainant contends. The term does not describe the specific characteristics of any goods or services. According to the Complainant it is evident from the record that the Respondent has not used the disputed domain name for such a bona fide offering of goods or services. The website to which the disputed domain name resolves is designed to lure consumers in search of PROVIGIL, a well-known brand according to the Complainant, to make pharmaceutical purchases over the Internet. The Complainant asserts that it has reason to believe that the relevant website constitutes 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 name because it has used it, incorporating the PROVIGIL mark as they do, to make unauthorized sales of PROVIGIL products for the Respondent’s profit.

According to the Complainant, the Respondent has used the disputed domain name in bad faith as it has knowingly registered a confusingly similar domain name to divert Internet uses to the Respondent’s website that purports to be selling the Complainant’s products. The website is said to suggest an affiliation with or endorsement by the Complainant. As a result, consumers are likely to believe that the products promoted and advertised on the website to which the disputed domain name resolves are provided by or sponsored by Complainant. This is certainly a bad faith use. Currently the website is redirected to the site
“http://online-pharmacy-direct24.net/search.html?q=provigil”.

The Complainant also says that the Respondent was clearly aware of the Complainant when the disputed domain name was registered given that it fully incorporates the Complainant’s trademark and that the website at the disputed domain name promotes the unauthorized sale of PROVIGIL products. Given this awareness, the Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s PROVIGIL trademark. However, that trademark is clearly recognizable within the disputed domain name, and the addition of the suffix “pro” does not affect that conclusion. However, that addition is relevant for the analysis under the second element.

Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s PROVIGIL trademark.

B. Rights or Legitimate Interests

The Respondent is not known by the disputed domain name or the term “Provigil” and as the Complainant points out there is little in the way of legitimate use of that distinctive trademark possible without the authorization of the Complainant noting the composition of the disputed domain names. No authorization of any kind has in fact been granted to the Respondent. The disputed domain name resolves to a website displaying information about the Complainant’s product and displays the text “Where to buy Provigil (Modafinil) without a prescription” followed by a link to an online pharmacy-type website that purport to sell other branded pharmaceutical products as well. The Complainant asserts that it has reason to believe that it is a rogue Internet pharmacy that does not comply with the laws and regulations of many countries in which they operate. The unauthorized incorporation of the Complainant’s PROVIGIL mark in the disputed domain name coupled with the addition of the suffix “pro” only reinforces the misleading impression of a legitimate connection between the disputed domain name and the PROVIGIL trademark, and is clearly intended to lure Internet users to the rogue pharmacy website. None of these activities give rise to any rights or legitimate interests, and the Respondent also did not file any reply to the Complainant’s contentions.

Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s PROVIGIL trademark is distinctive and given its subsequent use to direct Internet users to an online pharmacy website, it is not possible that the Respondent was not aware of the Complainant and its rights in the PROVIGIL mark at the time of registration of the disputed domain name. The website to which the disputed domain name resolves gives the impression of operating with the approval of the Complainant and offering genuine products supplied by the Complainant. In reality, that is not necessarily the case and therefore Internet users are deceived by the use the Respondent has made of the Complainant’s mark, entirely without its license or authorization. The registration of the disputed domain name is nothing more than a blatant attempt to mislead consumers by the unauthorized use of the Complainant’s distinctive trademark.

Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.

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 name <provigilpro.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: June 10, 2020

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