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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cephalon Inc v. Whois Privacy Protection Foundation / Oleg Smirnov

Case No. D2020-1247

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, the Netherlands / Oleg Smirnov, Republic of Moldova.

2. The Domain Name and Registrar

The disputed domain name <provigil-modafinil.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 May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 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 May 26, 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 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 May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. The Respondent did not submit any response, but sent an email to the Center on June 6, 2020 stating that it did not control the disputed domain name and agreed to cancel the registration. The Complainant chose to continue with the proceeding and did not wish to suspend the proceedings. Accordingly, the Center notified the Commencement of Panel Appointment on June 22, 2020.

The Center appointed Steven A. Maier as the sole panelist in this matter on June 24, 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 a pharmaceutical company located in Pennsylvania, United States.

The Complainant is the owner of registrations for the trademark PROVIGIL, including for example the following:

- International trademark number 735867 for the mark PROVIGIL, registered on May 9, 2000;
- United States trademark number 2499937 for the design plus word mark PROVIGIL, registered on October 23, 2001; and
- European Union trademark number 3508843 for the word mark PROVIGIL, registered on March 25, 2008.
The disputed domain name was registered on October 27, 2017.
The disputed domain name has resolved to a website at “www.provigil-modafinil.com”. The website appears to represent an online pharmacy named “TrustPharmacy” and to offer a product named PROVIGIL for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its PROVIGIL trademark. It submits that the disputed domain name incorporates the Complainant’s trademark PROVIGIL in its entirety, together with the term “modafinil”. The Complainant states that this additional term does not distinguish the disputed domain name from its trademark because it is the generic name for its PROVIGIL trademarked product.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the name PROVIGIL has no meaning other than to refer to the Complainant’s product, that the Respondent has no trademark corresponding to the disputed domain name, and that it has not otherwise been known by that name. The Complainant states that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name because it is using the disputed domain name misleadingly to lure customers to its website.

The Complainant submits that the disputed domain name was registered and has been used in bad faith. It contends that it is obvious the Respondent registered the disputed domain name with the Complainant’s PROVIGIL trademark in mind, since the disputed domain name incorporates that trademark and is used for the purpose of a website purporting to sell the Complainant’s product. The Complainant contends that the disputed domain name has been used in bad faith because the use of its trademarked name falsely suggests an affiliation with or endorsement by the Complainant and consumers are likely to be confused into believing that the Respondent’s website is operated or authorized by the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

Save for its informal communication with the Center referred to above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the name and mark PROVIGIL. The disputed domain name comprises that trademark together with the additional term “modafinil”. The Panel accepts the Complainant’s evidence that this additional term is the generic name of the Complainant’s trademarked product, and finds in any event that the addition of this term does not serve to distinguish the disputed domain name from the Complainant’s trademark. The Panel finds in the circumstances that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website which falsely implies an association with the Complainant and that such use cannot give rise to rights or legitimate interests. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent’s incorporation of the Complainant’s trademark into the disputed domain name, without adornment other than the addition of the generic name of the Complainant’s product, constitutes an impersonation of the Complainant. The Panel infers in the circumstances that the Respondent registered the disputed domain name with the Complainant’s PROVIGIL trademark and product in mind and for the purpose of taking unfair advantage of the Complainant’s goodwill in that trademark.

The Panel finds that the Respondent has used the Complainant’s trademark PROVIGIL for the purpose of a commercial website purporting to sell the Complainant’s trademarked product. The Panel finds that by incorporating the Complainant’s trademark in the disputed domain name the Respondent has sought to mislead Internet users into believing that its website is legitimately connected with the Complainant. The Panel concludes in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or service on that website (paragraph 4(b)(iv) of the Policy).

The Panel therefore concludes that the disputed domain name has been registered and is being 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, <provigil-modafinil.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 8, 2020

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