WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cephalon Inc v. Domain Administrator, See PrivacyGuardian.org / Erik Bilevic, SEO and Luiz Costa
Case No. D2020-0935
1. The Parties
The Complainant is Cephalon Inc, United States of America (“United States”), represented by SILKA Law AB, Sweden.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States / Erik Bilevic, SEO, Lithuania, and Luiz Costa, Brazil.
2. The Domain Names and Registrars
The disputed domain names <buyprovigilcheap.com> (“Domain Name 1”) is registered with NameSilo, LLC.
The disputed domain name <buyprovigilsafe.com> ( “Domain Name 2”, together with Domain Name 1 collectively referred to as the “Domain Names”) is registered with 1API GmbH (together with NameSilo, LLC collectively referred to as the “Registrars”).
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 Registrars a request for registrar verification in connection with the Domain Names. On April 16, April 20, May 5 and May 7, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the 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 7, 2020, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 12, 2020.
The Center verified that the Complaint, together with the amended 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 Respondents of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 5, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on June 18, 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 as a global biopharmaceutical company. In October 2011, the Complainant was acquired by Teva Pharmaceuticals, and is now a wholly owned subsidiary. The Complainant’s product commercialized as Provigil is part of Teva’s CNS (Central Nervous System) line of specialty medicines.
The Complainant is the owner of the registered trademarks for PROVIGIL under International Trade Mark Registration Number 735867, registered on May 9, 2000 and United States Trade Mark Registration Number 2000231, registered on September 10, 1996 (the “Trade Mark”). The Complainant uses the Trade Mark in its own domain names including <provigil.com> and <provigil.us>.
Domain Name 1, registered on October 5, 2019, resolves to a website purportedly offering for sale the Complainant’s products, and including a link to Domain Name 2. Domain Name 2, registered on September 3, 2017, also resolves to a website purportedly offering for sale the Complainant’s products. Further, the websites at the Domain Names display third party links.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrants are related and under management and common control of a single network are set out in section 6 below.
The Respondents did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issue - Consolidation of the Proceeding
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
(1) Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
(2) The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfil the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In this case, the Complainant has submitted a request for consolidation of multiple Respondents, mainly based on the following reasons:
- The Domain Names target the same trade mark PROVIGIL and incorporates the same prefix such as “buy”;
- The Domain Names share the same servers;
- The website at Domain Name 1 offers information about buying Provigil tablets from the website connected to Domain Name 2 and a link to the same, as such there is a clear connection between the Domain Names;
- The websites at the Domain Names are both in English.
The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are somehow connected to each other and under common control aimed at intentionally using the Trade Mark in the Domain Names in bad faith. The Respondents did not file a response and so has not challenged any of these allegations.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. The Respondents may therefore be referred to as the “Respondent”.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
7.2. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Complainant’s registered trade mark is reproduced in its entirety in the Domain Names together with the descriptive terms “buy” and “cheap” in respect of Domain Name 1 and “buy” and “safe” in respect of Domain Name 2. The addition of these descriptive terms do not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not authorized to use the Trade Mark within the Domain Names. Neither is the Respondent commonly known by the Domain Names. The Respondent’s unauthorized use of the Trade Mark in the Domain Names in relation to the websites purporting to lure consumers to buy Provigil through online pharmacies that may not be compliant to local regulatory laws is not bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Names. Further the Domain Names which bear the Trade Mark are linked to the websites displaying third party links that offer for sale third party pills is also not bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The trade mark registrations of the Complainant predate the registration of the Domain Names and the Domain Names consist of the Trade Mark in its entirety and they are linked to the websites which reference the Complainant’s products. Therefore, it is implausible that the Respondent was unaware of the Complainant when it registered the Domain Names.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that registration was in bad faith.
The Domain Names are also being used in bad faith. The Websites are set up for the commercial benefit to the Respondent without authorisation from the Complainant. It is highly likely that Internet users when typing the Domain Names into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names. The Respondent employs the fame of the Trade Mark to mislead users into visiting the websites connected to the Domain Names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
Therefore, the Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <buyprovigilcheap.com> and <buyprovigilsafe.com> be transferred to the Complainant.
Date: July 2, 2020