WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cephalon Inc. v. Domain Privacy / Linda Blackwood
Case No. D2020-0945
1. The Parties
The Complainant is Cephalon Inc., United States of America (the “United States”), represented by SILKA Law AB, Sweden.
The Respondent is Domain Privacy, China / Linda Blackwood, Germany.
2. The Domain Names and Registrar
The disputed domain names <buy-provigil.com> and <igetprovigil.com> are registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 17, 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 April 22, 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 24, 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on May 28, 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 which covers Germany, and that in relation to Nice class 5 goods (registered on March 25, 2008).
The Complainant uses its mark in its own domain names such as <provigil.com> and <provigil.us>.
The Respondent is located in Germany. The online pharmacy-style websites to which the disputed domain names resolve are designed to lure consumers in search of PROVIGIL products, and a substantial number of unrelated branded pharmaceuticals are offered for sale on these websites.
The disputed domain names were registered on January 18, 2020 and January 23, 2020 respectively.
5. Parties’ Contentions
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 names directly incorporate the Complainant’s registered trademark in its entirety. That trademark is said to be clearly recognizable. The mere addition of the words “buy” and “iget” only reinforces the false association between the trademark and the disputed domain names, 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 names for a bona fide offering of goods or services. The websites to which the disputed domain names resolve are 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 websites constitute 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 because it has used them, incorporating the PROVIGIL trademark as they do, to make unauthorized sales of PROVIGIL products for the Respondent’s profit,
The Respondent has used the disputed domain names in bad faith by knowingly registering confusingly similar domain names that incorporate the PROVIGIL trademark, in order to divert Internet users to the Respondent’s websites that purport to sell the Complainant’s products. According to the Complainant, the website suggest an affiliation with or endorsement by the Complainant. As a result, consumers are likely to mistakenly believe that the products promoted and advertised on the website are provided by or sponsored by the Complainant. This is certainly a bad faith use, or so the Complainant asserts. The sites sell other branded medication and not merely PROVIGIL, for example VIAGRA, LEXAPRO, CLOMID, AMOXIL, etc.
According to the Complainant, the Respondent was clearly aware of the Complainant when registering the disputed domain names given that they fully incorporate the Complainant’s trademark and given that the websites to which they resolve are used for the unauthorized sale of PROVIGIL products.
The Complainant adds that 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are not identical to the Complainant’s PROVIGIL trademark. However, that trademark is clearly recognizable within the disputed domain names, and the additions of “buy” and “iget” do not affect that conclusion. However, those additions are relevant for the analysis under the second element.
Therefore, the Panel holds that the disputed domain names are confusingly similar to the Complainant’s PROVIGIL trademark.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain names 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 names resolve to online pharmacy-type websites that purport to sell other branded pharmaceutical products as well. The Complainant asserts that it has reason to believe that these are rogue Internet pharmacies that do not comply with the laws and regulations of many countries in which they operate. The unauthorized incorporation of the Complainant’s PROVIGIL trademark in the disputed domain names coupled with the additions of the suffixes “buy” and “I get” only reinforce the misleading impression of a legitimate connection between the disputed domain names and the PROVIGIL trademark, and is clearly intended to lure Internet users to the rogue pharmacy websites. 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 names.
C. Registered and Used in Bad Faith
The Complainant’s PROVIGIL trademark is distinctive and given the subsequent use made of it, it is not possible that the Respondent was not aware of the Complainant and its rights in the PROVIGIL trademark at the time of registration of both the disputed domain names. In fact, it appears the disputed domain names were registered with the bad faith purpose of luring unsuspecting Internet users into visiting a rogue online pharmacy in search of legitimate PROVIGIL products. Internet users would expect to find websites that have the imprimatur of, and are governed by the Complainant, and expect to find only PROVIGIL products there. In fact, pharmaceutical products unrelated to the Complainant were offered at the relevant websites. The Complainant’s registration and subsequent use of the disputed domain names was designed to mislead Internet users into visiting websites, to then profit from selling them unrelated goods.
Therefore, the Panel holds that the disputed domain names were registered and used in bad faith.
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 <buy-provigil.com> and <igetprovigil.com> be transferred to the Complainant.
William A. Van Caenegem
Date: June 10, 2020