WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cephalon Inc v. Whois Privacy Protection Foundation / Grigorij Minin, Whois Privacy Protection Foundation / Artem Bogdanov, and Alex Ivanov, Evgeny Shaposhnikov

Case No. D2021-0497

1. The Parties

Complainant is Cephalonia Inc., United States of America (“United States” or “US”), represented by SILKA AB, Sweden.

Respondent is Whose Privacy Protection Foundation, the Netherlands / Grigori Minim, Belarus, Whose Privacy Protection Foundation, the Netherlands / Rate Bogdan, Latvia, and Alex Ivanov, Evgeni Shaposhnikov, Russian Federation.

2. The Domain Names and Registrars

The disputed domain name <buyprovigil24.com> is registered with Nicenic International Group Co., Limited (the “First Registrar”).

The disputed domain names <provigilmodafinil.com>, <provigilmodafinil.online>, <provigilrx.com>, and <provigilrx.online> are registered with Hosting Concepts B.V. d/b/a Openprovider (the “Second Registrar”).

The disputed domain names will hereinafter be collectively referred to as “the Domain Names”, unless otherwise specified when referring to them individually.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 18, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names.

On February 19, 2021, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the <buyprovigil24.com> Domain Name, which differed from the named Respondent and contact information in the Complaint.

On February 22, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the <provigilmodafinil.com>, <provigilmodafinil.online>, <provigilrx.com>, and <provigilrx.online> Domain Names, which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to Complainant on February 22, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 25, 2021.

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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on April 12, 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. Preliminary issue: Consolidation of Respondents

The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation of the Domain Names:

- the Domain Names share the same structure and include the brand PROVIGIL along with other non-distinctive words or letters;

- the Domain Names were registered on two days, November 13, 2020 and November 20, 2020, with only seven days difference, namely, the Domain Names <buyprovigil24.com>, <provigilrx.com> and <provigilrx.online> were registered on November 13, 2020, the last two with a few seconds time difference and the Domain Names <provigilmodafinil.com> and <provigilmodafinil.online> were registered on November 20, 2020, with a few seconds time difference, namely all Domain Names were registered at times close to one another;

- all Domain Names apart from <buyprovigil24.com> are registered with the same registrar, namely Hosting Concepts B.V. d/b/a Openprovider;

- as Complainant demonstrated, the Domain Names <buyprovigil24.com> and formerly <provigilrx.com> lead to identical websites, while currently <provigilrx.com> and <provigilmodafinil.com> lead to similar websites, and formerly lead to websites similar to the websites of <buyprovigil24.com> and former <provigilrx.com>;

- the Domain Names <provigilmodafinil.com> and <provigilmodafinil.online> share the same named Respondent;

- the Domain Names <provigilrx.com> and <provigilrx.online> share the same named Respondent;

- all Domain Names share the same Domain Name Server, namely Cloudflare.com.

All the above, along with the fact that the named Respondents did not submit any arguments to rebut this inference is taken into account by the Panel.

The Panel finds that the consolidation of the Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there is more than one Respondent for these Domain Names), but have chosen not to rebut the consolidation (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the Complaint, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity; hence, the Panel grants the consolidation for the Domain Names (and will refer to these Respondents as “Respondent”).

5. Factual Background

Complainant is a biopharmaceutical company established in 1987 in the United States. In October 2011, it was acquired by TEVA Pharmaceuticals Industries Limited and is now a wholly owned subsidiary. Per Complaint, “Provigil” is the name of a prescription medicine of Complainant that helps to treat the symptoms of excessive sleepiness caused by obstructive sleep apnea, narcolepsy and shift work and has been used for almost two decades.

Complainant is the owner of trademark registrations for PROVIGIL around the world including:

- US trademark registration No. 2000231, PROVIGIL (word), filed on March 31, 1994 and registered on September 10, 1996, for goods in International class 5, and

- International trademark registration No. 438439, PROVIGIL (word), registered on June 28, 1978, for goods in International class 5.

Per Complaint, Complainant is also the owner of a number of domain name registrations for PROVIGIL, including <provigil.com>, <provigil.net>, <buy-provigil.com>, and <provigil-shop.com>.

The Domain Names were registered on November 13, 2020 and November 20, 2020.

The Domain Name <buyprovigil24.com> leads to a website, purportedly being an online pharmacy selling PROVIGIL and other medicines, displaying information about PROVIGIL (Website 1). Per Complaint, when clicking on the product / cart, the user is redirected to another website “www.firstmedstore.com”, where the orders can be placed. As Complainant demonstrated, the named registrant of the corresponding domain name <firstmedstore.com> is the named registrant of the Domain Name <buyprovigil24.com>. The same named registrant, as Complainant demonstrated, appears as the owner also of other domain names, such as <buyzovirax.com>, <buyaciclovir.com>, and <buyaldactone.com>.

The Domain Names <provigilrx.com> and <provigilmodafinil.com> lead to websites which both have a similar layout, largely written in Lorem Ipsum, where PROVIGIL medicines are purportedly sold and information about Complainant’s PROVIGIL product is purportedly presented, with the usage and description of the product (Websites 2 and 3; collectively Websites 1, 2, 3 “the Websites”). Formerly, as Complainant demonstrated, and at least on January 2021, Website 2 was identical to Website 1. Website 2 had exactly the same information as Website 1 and was being redirected to “www.firstmedstore.com”. Formerly, as Complainant demonstrated, and at least on January 2021, Website 3 displayed another online pharmacy, titled as “Canadian Pharmacy”, with exactly the same links on the top (“About Us, Bestsellers, Testimonials, FAQ, Policy, Contact Us”) and in the sidebar as the former Website 2 and Website 1, displaying the exact same products / pricing and redirecting also to the website “www.firstmedstore.com”. Furthermore, as Complainant demonstrated, the Domain Names <provigilrx.com> and <provigilmodafinil.com> appear as part of spam comments in various websites, such as “www.bjbe.org/comment/99091” (December 1, 2020), “www.surbitonpilates.com/reformer/comment-page-1840/” (November 28, 2020) and “www.deluxe.com.ng/comment/279830” (November 29, 2020).

The Domain Names <provigilrx.online> and <provigilmodafinil.online> do not resolve to active websites.

6. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Names:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Domain Names incorporate Complainant’s trademark PROVIGIL in its entirety. This is sufficient to establish confusing similarity (WIPO Overview 3.0, section 1.7).

The addition of the dictionary word “buy” or the numerical “24” or the letters “RX” or the active ingredient of the pharmaceutical PROVIGIL “modafinil” as the case may be, in the Domain Names does not prevent a finding of confusing similarity, as the trademark PROVIGIL remains clearly distinguishable (WIPO Overview 3.0, section 1.8).

The generic Top-Level Domains (“gTLD”) “.com” and “.online” are disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names are confusingly similar to the PROVIGIL mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, three of the Domain Names resolve to the Websites containing content that suggests falsely that the Websites are of an entity affiliated or an authorized partner of Complainant and two of the Domain Names are inactive.

The Websites purportedly sell PROVIGIL goods of Complainant, which along with the detailed information about PROVIGIL, reinforces the (false) association between the trademark and the Domain Names.

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: “(i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to ‘corner the market’ in domain names that reflect the trademark”).

These requirements are not cumulatively fulfilled in the present case. The three active Domain Names falsely suggest that the Websites are official sites of an entity affiliated to or endorsed by Complainant. The Websites reproduce, without authorization by Complainant, Complainant’s trademark, information about its product, sell goods under third party trademarks and have no disclaimer of lack of association with Complainant. Lastly, per Complaint, the Websites do not appear to be legal online pharmacies. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).

Furthermore, the Websites redirect or redirected formerly to the website “www.firstmedstore.com” the corresponding domain name of which belongs to named Respondent of Website 1. A respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).

Lastly, the nature of the Domain Names carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith.

Because the PROVIGIL mark had been widely used and registered by Complainant before the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the fact that PROVIGIL is a made up name.

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of PROVIGIL (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

As regards the Websites, Complainant demonstrated that the content related to the Domain Names was targeting Complainant’s trademark, as they displayed Complainant’s trademark and purported information on its product PROVIGIL, which was also offered for sale. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users were likely to consider the three Domain Names leading to the Websites, as in some way endorsed by or connected with Complainant (Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367). This also further supports knowledge of Complainant and its field of activity.

As regards bad faith use of the Domain Names, Complainant has demonstrated that three of the Domain Names were used to create the Websites, which displayed Complainant’s registered trademark, thereby giving the false impression that they were operated by a company affiliated to Complainant or an authorised partner of Complainant. The three Domain Names operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites they resolved to. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, section 3.1.4).

Furthermore, per Complaint, the Websites direct or formerly directed, as the case may be, users to the online pharmacy “www.firstmedstore.com” the domain name of which is owned by the named Respondent of Website 1. Redirecting the domain name to a different respondent-owned website also supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark (WIPO Overview 3.0, section 3.1.4). Furthermore, as Complainant demonstrated, two of these Domain Names were being used as part of spam comments, to redirect traffic to the corresponding Websites. The comments, per Complainant, have more links to other domain names targeting pharmaceutical companies, while the named Respondent of the Domain Name <buyprovigil24.com> appears as registrant of such pharmaceutical targeting domain names like <buyzovirax.com>, <buyaciclovir.com>, and <buyaldactone.com>.

The other two Domain Names currently do not resolve to active websites. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).

Lastly, four of the Domain Names were registered with a privacy shield service to hide the registrant’s identity. Respondent’s concealment of the Domain Names holder’s identity through use of a privacy shield constitutes further indication of bad faith (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

8. Decision

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, <buyprovigil24.com>, <provigilmodafinil.com>, <provigilmodafinil.online>, <provigilrx.com>, and <provigilrx.online> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: April 22, 2021