WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cephalon Inc. v. Whois Privacy Protection Foundation / Lisa Perry
Case No. D2020-3536
1. The Parties
Complainant is Cephalon Inc. (“Complainant”), United States of America (“United States”), represented by SILKA AB, Sweden.
Respondent (“Respondent”) is Whois Privacy Protection Foundation, Netherlands / Lisa Perry, United States.
2. The Domain Name and Registrar
The disputed domain name <provigilmed.com> (the “Domain Name”) 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 December 29, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 7, 2021.
Respondent sent an informal communication to the Center via email on January 4, 2021. The Center sent the possible settlement communication to the parties allowing them to suspend the proceedings to explore the possibility of a settlement agreement on January 4, 2021. Complainant requested to proceed with the case on January 7, 2021. Respondent sent another communication on January 7, 2021 to which the Center acknowledged receipt.
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 Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process to the Parties on January 29, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on February 3, 2021. 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
Complainant, Cephalon Inc., is a global biopharmaceutical company.
Complainant owns multiple trademark registration for the mark PROVIGIL throughout the world. Among others, Complainant owns the following trademark registrations relevant to this proceeding:
- PROVIGIL – India Trademark Registration No. 1293763 filed on July 1, 2004 and registered on February 7, 2005 in Class 5; and
- PROVIGIL – United States Trademark Registration No. 2000231 filed on March 32, 1994 and registered on September 10, 1996 in Class 5.
On October 23, 2020, Respondent registered the Domain Name with the Registrar. At the time of the filing of the Complaint, the Domain Name resolved to a copycat website displaying Complainant’s products. The website linked to the Domain Name listed, inter alia, multiple other categories for pharmaceutical products. At the time of the Decision, the Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
As factual background, Complainant alleges that it was founded in 1987 and had grown to be a global biopharmaceutical company dedicated to discovering, developing and bringing to market medications to improve the quality of life of individuals around the world. In October 2011, Complainant was acquired by Teva Pharmaceuticals, and is now a wholly owned subsidiary. Complainant alleges that its pharmaceutical product named PROVIGIL “Modafinil” is part of a line of specialty central nervous system medicines.
Complainant further alleges that it is the owner of the distinctive trademark PROVIGIL and has several registrations for the word mark and label for PROVIGIL around the world. Specifically, Complainant alleges to be the owner of the International Trademark registration 438439 registered on June 28, 1978, and the US and Indian trademark registrations mentioned aboev. In addition, Complainant asserts that it was the first in the world to have conceived and adopted the mark PROVIGIL as a name for prescription medicine many decades earlier. Since this time, Complainant contends that PROVIGIL has been openly, continuously and extensively used globally and has thus acquired secondary meaning in the mark. Collectively, these registered (and unregistered) trademark rights are referred to herein as the “PROVIGIL Mark.”
With respect to the first element of the Policy, Complainant alleges that Respondent has registered the Domain Name consisting of Complainant’s PROVIGIL Mark along with the word “med”, which indicates the field of activity for Complainant because “med” is an abbreviation of the word medicine. As such, Complainant alleges that its trademark is clearly recognizable within the Domain Name.
With respect to the second element of the Policy, Complainant contends that there is nothing in Respondent WHOIS information or any contact information on webpage displayed at the Domain Name indicating that Respondent is commonly known by the Domain Name. Complainant also contends that Respondent has not been permitted or licensed by Complainant to use the term PROVIGIL, a unique word created by Complainant. Instead, Complainant points out that the Domain Name was registered for the purpose of exploiting the goodwill of Complainant and to mislead the general public. Specifically, Complainant alleges that Respondent has linked the Domain Name to an online pharmacy, and the said webpage provides purports to be selling Complainant’s PROVIGIL products or a generic version thereof. Complainant contends that this is unlawful use of its trademark and that Respondent cannot satisfy the test set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
With respect to the third element of the Policy, Complainant alleges that, given the well-known global reputation of its PROVIGIL Mark, Respondent must have known of Complainant’s trademark when Respondent registered the Domain Name. Further confirming bad faith, Complainant points out that Respondent’s use of the Domain Name to purport to sell Complainant’s product shows that at the time of the registration of the Domain Name, Respondent intentionally targeted Complainant’s prior registered trademark.
Complainant alleges that bad faith use of the Domain Name is established because the website displayed at the Domain Name suggests an affiliation with or endorsement by Complainant, and that, as a result, consumers are likely to mistakenly believe that the products promoted and advertised on Respondent’s website are provided by or sponsored by Complainant.
Lastly, Complainant asserts that Respondent’s use of a domain privacy service in this instance has been to increase the difficulty for Complainant in identifying Respondent and is further evidence of bad faith.
Respondent did not file an official Response to the Complaint. Instead, Respondent sent informal communication to the Center on January 4, 2021, stating:
“we delete website”.
Respondent sent another informal communication on January 7, 2021, stating:
“we deleted the website, give them the domain”.
6. Discussion and Findings
Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of at least two trademark registrations in multiple countries for PROVIGIL.
It is well-established that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 and Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH. v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s PROVIGIL Mark in its entirety, as the dominant element. The addition of the term “med” is a well-known abbreviation for the word “medicine”, which is a descriptive word for the area of commerce for the PROVIGIL product and does prevent a finding of confusing similarity as the PROVIGIL Mark is clearly recognizable in the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s PROVIGIL Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 and Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Complainant contends it has not provided any license, permission or authorization for Respondent to use or register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point.
Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.
There is no evidence to suggest that Respondent has ever used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Therefore, Respondent cannot establish rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy. Respondent is using the Domain Name in connection with a website that purports to sell prescription medications. Even assuming arguendo that the website linked to the Domain Name was a legitimate lawful online pharmacy, Respondent’s actions still must satisfy fair use principles such as the requirements set forth in Oki Data America, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”); see e.g., Cephalon Inc v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ally Bit, WIPO Case No. D2020-1125. The Oki Data case instructs that to be considered bona fide use, Respondent’s offering must meet several requirements, including the following:
(i) Respondent must actually be offering the goods or services at issue;
(ii) Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(iii) Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
(iv) Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, Respondent appears to be offering real PROVIGIL products, but instead is offering the generic form called “Modafinil”. Respondent also is not selling only PROVIGIL-branded products. The website linked to the Domain Name moreover lists multiple other categories for pharmaceutical products. Moreover, although the website linked to the Domain Name may arguably be offering Modafinil, the content of the webpage is intended to draw an association of source or sponsorship to the PROVIGIL Mark, pursuant to WIPO Overview 3.0, section 2.5.3, with statements such as “Provigil is a wakefulness-promoting agent for adults”, “Provigil is usually given in the mornings to prevent daytime sleepiness”, and “Effectiveness of Provigil may be diminished by cyclosporine (Sandimmune), theophylline, and hormonal contraceptives.” Lastly, Respondent’s website contains a disclaimer but neither the disclaimer or other content on the website take any steps to prevent any confusion or accurately disclose a (lack of) relationship between Complainant and Respondent. In sum, Respondent cannot satisfy the first of the three factors of the Oki Data requirements test.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent purports to offer competing generic pharmaceutical products for sale from the website linked to the Domain Name. Such activity does not amount to a fan site, criticism or other activity that may be considered noncommercial or fair. The Panel finds that the use of the Domain Name in this manner to divert Internet traffic or to confuse and deceive the Internet users is neither non-commercial nor a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka, WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.)
Accordingly, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the well-known PROVIGIL Mark which has been used in commerce for more than two decades before the Domain Name was registered. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
As discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s PROVIGIL Mark to sell either generic versions of Complainant’s PROVIGIL medicine or to sell unauthorized PROVIGIL medicine through an alleged unlawful online pharmacy. The website linked to the Domain Name moreover lists multiple other categories for pharmaceutical products. This amounts to bad faith use of the Domain Name by Respondent. See Cephalon Inc v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ally Bit, WIPOCase No. D2020-1125 (finding bad faith registration and use where the disputed domain name resolved to a website that claims to offer for sale PROVIGIL potentially putting the public at risk by attempting to sell a potentially counterfeit or expired prescription drug that do not meet the manufacturing standards of the complainant. The panel also pointed out that the actions of the respondent in attempting to sell the complainant’s products could result in the public being misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold on the respondent’s website); Cephalon Inc. v. Margarita Pilan, WIPO Case No. D2020-0931 (finding bad faith registration and use where the disputed domain name linked to an unauthorized online pharmacy which was “a blatant attempt to mislead consumers by the unauthorized use of the complainant’s distinctive trademark.”); Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the PROVIGIL Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) 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 Name <provigilmed.com> be transferred to Complainant.
John C McElwaine
Date: February 17, 2021