WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cephalon, Inc. v. Kris McCann
Case No. DCO2016-0009
1. The Parties
Complainant is Cephalon, Inc. of Frazer, Pennsylvania, United States of America, represented by Matkowsky Law P.C, United States of America.
Respondent is Kris McCann of Halifax, Nova Scotia, Canada.
2. The Domain Name and Registrar
The disputed domain name <nuvigil.co> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. Respondent did not submit any substantive response. Accordingly, the Center notified Respondent’s default on March 22, 2016.
Respondent contacted Complainant and the Center several times throughout the proceeding seeking the private resolution of the dispute. Complainant, however, indicated that a settlement would not be possible, and requested that the Center proceed to appoint a Panel in this matter.
The Center appointed David Perkins as the sole panelist in this matter on April 8, 2016. 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
4.A.1 Complainant is a subsidiary of Teva Pharmaceutical Industries Ltd (“Teva”). Teva was established in 1901 and operates in 60 countries worldwide. Complainant was formed in 1976.
4.A.2 Complainant produces NUVIGIL (armodafinil), a treatment for improving wakefulness in adult patients with excessive sleepiness associated with narcolepsy, obstructive sleep apnoea and shift work disorder. It is part of Teva’s CNS (Central Nervous System) line of specialty medicines.
The NUVIGIL trade mark
4.A.3 Complainant is the proprietor of the NUVIGIL trade mark in a number of territories, including the United States and Europe. Particulars of those registrations are:
Classes of goods
Dates of application and registration.
Community Trade Mark (CTM)
Filed: November 15, 2004; Registered: January 26, 2006
Filed: May 27, 2004;
Registered: November 25, 2008
4.B.1 In the absence of a Response, what is known of Respondent is derived from the Complaint, its Annexes and the email correspondence between the parties.
4.B.2 The disputed domain name was registered on July 14, 2015.
4.B.3 The disputed domain name resolves to a website which offers armodafinil tablets, and which contains a copyright notice incorporating Complainant’s NUVIGIL trade mark.
4.B.4 Shortly after Respondent was notified of the Complaint, by email dated March 9, 2016 he provided a domain authorisation code in order to transfer the disputed domain name. By email dated March 10, 2016 the Center advised the parties of the procedure to suspend the administrative proceeding in order to discuss and implement settlement of the dispute. In the absence of a reply from either party, on March 22, 2016 the Center advised the parties that it had moved to the Panel appointment process but that the proceeding could still be suspended for the purpose of settlement negotiations. Complainant replied the same day requesting suspension. However, the following day Complainant requested that the procedure continue “as it will not be able to reach settlement in this matter.”
4.B.5 Also on March 23, 2016 Respondent emailed Complainant and the Center in the following terms:
On March 9th I emailed you with the domain transfer code for the complainant to take ownership of the domain. This was within the scope of their demands. You forwarded this email to them on March 10th and this should have concluded the matter.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 Complainant asserts its trade mark rights in respect of NUVIGIL on the basis of the registrations listed in paragraph 4.A.3 above. Complainant also cites two cases under the Policy where its rights in the NUVIGIL trade mark have been recognised and the disputed domain names <nuvigil4bitcoins.com> and <buynuvigilonline.com> transferred.
5.A.2 Since the disputed domain name incorporates Complainant’s NUVIGIL trade mark in its entirety, Complainant’s case is that it is identical or confusingly similar to that mark. Complainant asserts that the “.co” suffix is to be ignored when making the comparison for the purpose of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
5.A.3 With reference to the WhoIs information identifying Respondent, Complainant says it is plain that he cannot demonstrate circumstances falling within paragraph 4(c)(ii) of the Policy.
5.A.4 Nor, Complainant says, has Respondent been licensed or otherwise authorised to use the NUVIGIL trade mark.
5.A.5 The website to which the disputed domain name resolves is, Complainant says, designed to lure consumers in search of its well known NUVIGIL brand to purchase over the Internet “Armodafinil (Waklert Brand by SUN Pharma)”. It is, Complainant says, clearly a rogue Internet pharmacy which does not comply with national or regional laws or regulations. Consequently, Complainant says Respondent cannot demonstrate circumstances falling within paragraphs 4(c)(i) or (iii) of the Policy.
Registered and Used in Bad Faith
5.A.6 From the use made of the disputed domain name, Complainant says it is clear that Respondent was well aware of Complainant’s well known NUVIGIL trade mark when registering that domain name.
5.A.7 In the light of the use made of the disputed domain name - summarised in paragraphs 4.B.3 and 5.A.5 above - Complainant submits that Respondent’s conduct falls within paragraphs 4(b)(iii) and (iv) of the Policy.
5.B.1 As noted, no Response has been filed.
5.B.2 Reference should also be made to Respondent’s emails dated March 9 and 23, 2016 noted in paragraphs 4.B.4 and 5.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 In the light of paragraph 4.A.3 above, clearly Complainant has rights in the NUVIGIL trade mark.
6.6 Equally clearly, the disputed domain name is identical to that trade mark.
6.7 Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or legitimate Interests
6.8 Complainant’s prima facie, unrebutted case summarised in paragraphs 5.A.3 to 5.A.5 is well made out and does not require repetition here. Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 Similarly, the Panel finds Complainant’s case in paragraphs 5.A.6 and 7 is well made out pursuant to paragraphs 4(b)(iii) and (iv). Consequently, the Complaint satisfies paragraph 4(a)(iii) of the Policy.
For all 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 <nuvigil.co> be transferred to Complainant.
Date: April 19, 2016