The Complainant is Cephalon Inc, United States of America (“United States”), represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Ally Bit, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 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 11, 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 12, 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 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020. The Center appointed Colin T. O’Brien as the sole panelist in this matter on June 5, 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, a wholly owned subsidiary of Teva Pharmaceuticals, sells a product called “Provigil” that is part of Teva’s CNS (Central Nervous System) line of specialty medicines. The Complainant is the owner of United States Reg. No. 2,000,231 for PROVIGIL registered September 10, 1996, as well as International Reg. No. 735867 for PROVIGIL and Design registered May 9, 2000, covering Switzerland, the United Kingdom, and Italy.1 The Complainant is the owner of the domain names The disputed domain name was registered on February 26, 2020. 5. Parties’ Contentions A. Complainant The disputed domain name directly incorporates the Complainant’s registered trademarks in its entirety. The mere addition of the word “buy” and “now” only reinforces the false association between the trademark and the disputed domain name. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not differentiate the disputed domain name from the trademark. There can be no bona fide offering of goods or services by the Respondent because the disputed domain name incorporates the Complainant’s trademark and the Respondent in not known by the name “provigil”. The distinctive PROVIGIL mark is not a term one could legitimately choose as a domain name unless one has specific rights in the term. The website to which the disputed domain name resolves to is designed to lure consumers in search of the Complainant’s well-known PROVIGIL brand to purchase over the Internet. The Complainant believes the website to which the disputed domain name resolves to is a rogue internet pharmacy that does not comply with the laws and regulations of many countries in which it operates. The Respondent is not making a fair use of the disputed domain name, as it is being used to make unauthorized sales of PROVIGIL products for the Respondent’s own profit. The Respondent has used the disputed domain name in bad faith by knowingly registering a confusingly similar domain name consisting of the PROVIGIL mark, in order to divert Internet uses to the Respondent’s website that purports to be selling the Complainant’s products. The disputed domain name resolves to a website suggesting an affiliation with or endorsement by the Complainant, which could likely result in consumers mistakenly believing the products promoted and advertised on the website at the disputed domain name are provided by or sponsored by the Complainant. The Respondent was clearly aware of the Complainant when the disputed domain name was registered given that the disputed domain name fully incorporates the Complainant’s trademark and the website at the disputed domain name promotes the unauthorized sale of PROVIGIL products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the PROVIGIL trademark throughout the world. The addition of the descriptive terms “buy” and “now” do not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. The disputed domain name resolves to a website that claims to offer PROVIGIL products. This use does not satisfy the “Oki Data test” for legitimate interest in the disputed domain name because the Respondent does not appear to be selling real PROVIGIL products. Further, the Respondent’s website does not disclose any relationship with the Complainant and the Respondent has prevented the Complainant from using the disputed domain name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The evidence indicates the Respondent obtained the disputed domain name years after Complainant had begun using the PROVIGIL mark on a worldwide basis, indicating that the Respondent sought to piggy-back on the PROVIGIL mark in order to sell possibly counterfeit PROVIGIL products. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name, rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered and used its PROVIGIL trademark on a worldwide basis. There is no non-benign reason for the Respondent to have registered a domain name containing PROVIGIL and the terms “buy” and “now”. Further, the use of the disputed domain name by the Respondent is clearly in bad faith. The disputed domain name resolves to a website that claims to offer for sale PROVIGIL. Such use by the Respondent potentially puts 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 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. See Pfizer Inc. v. jg a/k/a Josh Green WIPO Case No. D2004-0784. According to the Food and Drug Administration PROVIGIL “is a federally controlled substance (C-IV) because it can be abused or lead to dependence” and the selling or giving away of PROVIGIL may harm others, and is against the law. See, “https://www.fda.gov/media/79539/download”. It also appears that PROVIGIL is being used by people outside the scope of its prescription, see, “https://www.michaelshouse.com/the-risks-of-modafinil-abuse”/. The disputed domain name was registered on February 26, 2020, and will not be transferred until early July. This means a website purporting to sell a controlled drug, which can be abused by individuals, was active on the DNS system for over four months. The Panel finds 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 Colin T. O'Brien 1 These are the registrations contained in Annex 6. The Complaint itself referenced different registration numbers.
Sole Panelist
Date: June 19, 2020
Full & Egal Universal Law Academy