The Complainant is Cephalon Inc, United States of America (“United States”), represented by SILKA AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Bobbi Kontozoglou, Spain.
The disputed domain name <provigilonlinen.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 July 8, 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 July 8, 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 July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 20, 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.
The Complainant was established in 1987 as 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, the Complainant was acquired by Teva Pharmaceuticals, and is now a wholly owned subsidiary of that company. The Complainant’s product commercialized as “Provigil” is part of Teva Pharmaceutical’s Central Nervous System line of specialty medicines.
The Complainant is the owner of various trademark registrations for the word trademark PROVIGIL, including United States Registration No. 2000231 (registered on September 10, 1996), and European Union Registration No. 003508843, (registered on March 25, 2008). The Complainant owns at least one domain name, <provigil.us>, in which its PROVIGIL trademark appears.
The disputed domain name was registered on March 12, 2020. The Complainant has provided two screenshots, one of which shows the webpage to which the disputed domain name resolved on an unspecified date. The text on that webpage included the heading “FDA Approved Drugs! No Prescription!”, the title “Canadian Health&Care Mall”, and a button labelled “Enter Online Pharmacy”. The other screenshot, also undated, shows that when the “Enter Online Pharmacy” button on that webpage was clicked, the attempted redirect to another website was blocked. Currently, the disputed domain name does not resolve to an active website.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name directly incorporates the Complainant’s registered word trademark PROVIGIL in its entirety and it is clearly recognizable in the disputed domain name; (ii) the mere addition of the generic word “online” and the letter “n” only reinforces the false association between the trademark and the disputed domain name; and (iii) the addition of the generic Top-Level Domain (“gTLD”) “.com” does not differentiate the disputed domain name from the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) there is no bona fide offering of goods or services where the disputed domain name incorporates a trademark that is not owned by the Respondent; (ii) the Respondent is not known by the name “Provigil”; (iii) the word trademark registered by the Complainant is not a name one would legitimately choose as a domain name without having specific rights to such name; (iv) the website to which the disputed domain name resolves is designed to lure consumers in search of the Complainant’s well-known PROVIGIL brand to make a purchase over the Internet; (v) the Complainant has reason to believe that the website to which the disputed domain name resolves is a rogue Internet pharmacy that does not comply with the laws and regulations of many of the countries in which it operates; and (vi) the Respondent is not making a fair use of the disputed domain name because it has used the disputed domain name to make unauthorized sales of PROVIGIL products for the Respondent’s own profit.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has knowingly registered a confusingly similar domain name in order to divert Internet users to the Respondent’s website at which it purports to sell the Complainant’s products; (ii) the website resolving from the disputed domain name suggests an affiliation with or endorsement by the Complainant, and that, as a result, consumers are likely to mistakenly believe that the products promoted and advertised on it are provided or sponsored by the Complainant; (iii) the Respondent was clearly aware of the Complainant when the Respondent registered the disputed domain name, given that the disputed domain name fully incorporates the Complainant’s trademark and the website resolving from the disputed domain name promotes the unauthorized sale of PROVIGIL products; and (iv) the Respondent is using a privacy shield which can in certain circumstances constitute a factor indicating bad faith, and which has increased the difficulty for the Complainant of identifying the Respondent, which does not reflect good faith.
The Respondent did not reply to the Complainant’s contentions.
Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark PROVIGIL followed by the word “online” and the letter “n”. The Complainant’s trademark is clearly recognizable within the disputed domain name. As provided 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. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its PROVIGIL trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The addition of the word “online” and the letter “n” after the Complainant’s trademark in the disputed domain name will be understood by many Internet users as denoting an online location from which the Complainant supplies, or authorizes the supply of, its PROVIGIL products. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that purports to be an online pharmacy but which, almost certainly, is operating contrary to the laws and regulations of many of the countries from which it was accessible. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered many years after the Complainant first registered its PROVIGIL word trademark. The evidence on the record provided by the Complainant with respect to the use of its PROVIGIL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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 <provigilonlinen.com> be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: September 3, 2020