WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cephalon Inc v. Privacy Protection Service - Whoisproxy.ru / Veaceslav Ciuntu
Case No. D2021-1234
1. The Parties
The Complainant is Cephalon Inc, United States of America (“United States”), represented by SILKA AB, Sweden.
The Respondent is Privacy Protection Service - Whoisproxy.ru, Russian Federation / Veaceslav Ciuntu, Republic of Moldova.
2. The Domain Name and Registrar
The disputed domain name <provigilgenericinusa.com> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, 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 4, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent to the Parties a document in English and Russian related to the language of the proceeding. The Complainant filed an amended Complaint on May 6, 2021. On the same date, the Complainant filed a request the language of the proceeding to be English. The Respondent did not file any comments on the language of the proceeding.
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 Respondent of the Complaint, and the proceedings commenced on May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. No formal Response was filed with the Center. However, on May 30, 2021, the Respondent submitted a short informal communication to the Center. On June 1, 2021, the Center informed the Parties of the commencement of the Panel appointment process.
The Center appointed Assen Alexiev as the sole panelist in this matter on June 10, 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
The Complainant was established in 1987 as a global biopharmaceutical company. In October 2011, it was acquired by Teva Pharmaceuticals and is now its wholly owned subsidiary. The Complainant’s product Provigil is a specialty medicine for the central nervous system, and contains modafinil, a Schedule IV federally controlled substance in the United States. Provigil is indicated to improve wakefulness in adult patients with excessive sleepiness associated with narcolepsy, obstructive sleep apnea, or shift work disorder.
The Complainant is the owner of the following trademark registrations of the sign PROVIGIL (the “PROVIGIL trademark”):
- the International trademark PROVIGIL with registration No. 438439, registered on June 28, 1978 for goods in International Class 5;
- the United States trademark PROVIGIL with registration No. 2000231, registered on September 10, 1996 for goods in International Class 5; and
- the European Union Trade Mark PROVIGIL with registration No. 003508843, registered on March 25, 2008 for goods in International Class 5.
The disputed domain name was registered on February 18, 2021. It redirects to an online pharmacy website that offers for sale a generic alternative to the Complainant’s Provigil medicine.
5. Parties’ Contentions
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s PROVIGIL trademark, which it incorporates along with the descriptive words “generic in usa”, which indicate the intention to make available a generic medicine as an alternative for the Complainant’s Provigil medicine in the United States. The disputed domain name redirects to the website at “www.rxshopmd.com”, which makes use of keywords like “Provigil is a brand Registered”, “Analogs: Provigil”, “Video: Is Provigil the secret to success”, “Where to buy Provigil”, along with a description of the Complainant’s Provigil medicine, and so reinforces the false association between the PROVIGIL trademark and the disputed domain name.
According to the Complainant, the Respondent does not have rights or legitimate interests in the disputed domain name, as it is not commonly known by it and does not have trademark rights in it, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name attempts to mislead customers of the Complainant to believe that it is associated with the Complainant, and by taking advantage of the Complainant’s substantial reputation to confuse the public to purchase an alternative product for commercial gain. According to the Complainant, the website to which the disputed domain name redirects is a rogue internet pharmacy that does not comply with the laws and regulations of many countries in which it operates, since it states that visitors may buy the offered drug whether they have a prescription or not, because it is located in countries where the formulation is not strictly controlled and is sold over-the-counter. In the Complainant’s submission, these are false claims, as medicines for excessive sleepiness, insomnia, or other related diseases cannot be not sold without a prescription.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It submits that the disputed domain name was registered with knowledge of the Complainant’s PROVIGIL trademark and is being used to cause confusion and mislead the Complainant’s customers in an attempt to sell them a competitor product through an illegal online pharmacy. The disputed domain name and the associated website suggest an affiliation with or endorsement by Complainant, and as a result, consumers are likely to mistakenly believe that the product promoted and advertised through the disputed domain name is provided by or recommended by the Complainant.
The Respondent did not submit a formal Response. On May 30, 2021, it sent the following communication to the Center:
this domain name will be release in this year”.
6. Discussion and Findings
6.1. Procedural issue – Language of the proceeding
According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requests that the language of the proceeding be English. It points out that the disputed domain name contains English language words and redirects to an English language website at “www.rxshopmd.com”. The Complainant also notes that the Respondent has previously been involved in another domain name dispute involving the Complainant and the PROVIGIL trademark, i.e., Cephalon, Inc. v. Privacy protection service - whoisproxy.ru a/ka/ Veaceslav Ciuntu, CAC Case No. 101441, where the proceeding was conducted in English.
The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a formal Response or any objections to the Complainants’ request that the proceedings be held in English. Its only communication to the Center was in English.
The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2 Substantive issues
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
The Respondent however did not submit a formal Response in this proceeding addressing the above issues.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of various registrations of the PROVIGIL trademark and has thus established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” TLD section of the disputed domain name.
The disputed domain name incorporates the PROVIGIL trademark along with the words “generic”, “in”, and “usa”. The Complainant’s PROVIGIL trademark is clearly recognizable within the disputed domain name. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The above satisfies the Panel that the disputed domain name is confusingly similar to the PROVIGIL trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant has not authorized the Respondent to use the PROVIGIL trademark, and that the Respondent is using the disputed domain name to redirect to an illegal pharmacy website that offers for sale a generic alternative of the Complainant’s Provigil medicine. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a formal Response. In its only communication to the Center, it has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. The evidence in the case file shows that the disputed domain name indeed resolves to a website that offers for sale a product described as “generic Provigil”, produced by a competitor of the Complainant. The website describes the Complainant’s Provigil drug, and includes the following statements:
“When can you buy generic Provigil?
[…] For other health disorders or for the use as a cognitive function enhancer it can be hard to obtain a prescription. But there is a way out – you can buy Armodafinil without Rx online. It is possible because online pharmacies like ours are located in countries where the formulation is not strictly controlled and is sold over-the-counter.”
“Where to buy Provigil?
[…] If you want to save your money on the pills regardless of whether you have a prescription or not, you can order [the generic alternative product] 150 mg or Provigil online from our drugstore at the best price and we will ship them to your doorstep. Do not worry about the customs, we pack the products discretely and ship all over the world.”
The medication is shipped internationally including to the U.S., UK, Brazil, and many other countries within 7-25 days depending on the shipping method you choose.”
The above statements show that that the Respondent is well aware of the Complainant’s PROVIGIL trademark and product, and by using the Complainant’s trademark, attempts to sell an alternative competing product without prescription and without disclosing the contents of the shipments to the customs authorities. As stated by the Complainant, sales of such medicinal products without prescription would be illegal, and the Panel sees no reason to question this statement.
The above satisfies the Panel that it is more likely than not that the Respondent has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website, and to offer them for commercial gain the product of a competitor of the Complainant without complying with the applicable legal and customs requirements. To the Panel, such conduct does not appear to be legitimate nor giving rise to rights or legitimate interests of the Respondent in the disputed domain name.
In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name is confusingly similar to the PROVIGIL trademark and appears as designating an online source of a generic alternative to the Complainant’s Provigil product. The Respondent does not deny that it has used the disputed domain name for a website that indeed offers for sale such an alternative product of a competitor of the Complainant without prescription.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the PROVIGIL trademark to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the PROVIGIL trademark as to the source or endorsement of its website and of the product offered on it, in an attempt to sell a competing product without complying with the legal regulations for its sale.
Therefore, the Panel finds that the disputed domain name has been 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 name <provigilgenericinusa.com> be transferred to the Complainant.
Date: June 24, 2021