WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cephalon Inc v. Anonymize, Inc.

Case No. D2020-0930

1. The Parties

The Complainant is Cephalon Inc, United States of America (“United States”), represented by SILKA Law AB, Sweden.

The Respondent is Anonymize, Inc., United States.

2. The Domain Names and Registrar

The disputed domain names, <buyprovigilrx.net> and <provigilsmart.com>, are registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 24, 2020, the Registrar transmitted by email to the Center its verification response, confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was June 8, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 15, 2020.

The Center appointed D. Brian King as the sole panelist in this matter on July 1, 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

A. The Parties

The Complainant is Cephalon Inc., a biopharmaceutical company established in the United States in 1987. Cephalon is presently a subsidiary of Teva, an American-Israeli pharmaceutical company, which purchased it in 2011. Provigil is a medicine produced by the Complainant as part of Teva’s Central Nervous System specialty medicine line (Annex 5 to the Complaint). The drug is commonly used to treat extreme fatigue caused by such conditions as narcolepsy.

The Respondent has not provided the Panel with any information on its history or activities.

B. The Mark

The Complainant owns the trademark PROVIGIL, having first registered the mark in the United States on September 10, 1996 (registration number 2000231). The Complainant also registered the mark internationally on October 23, 2001 (international registration number 2499937) (Annex 6 to the Complaint). In addition, the Complainant owns domain names incorporating the mark, such as <provigil.com> and <provigil.us>. These were established on May 4, 1998 and April 24, 2002, respectively, and are used by the Complainant in connection with its business (Annex 7 to the Complaint).

C. The Domain Names

The disputed domain names are <buyprovigilrx.net> and <provigilsmart.com> (“Domain Names”). The former was registered on September 11, 2019, while the latter was registered on December 16, 2019. The websites to which the Domain Names resolve (“Websites”) both purport to sell the Complainant’s products online.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Names are confusingly similar to its registered trademark. The Complainant argues that the <buyprovigilrx.net> domain name simply adds the terms “buy” and “rx” to its mark, along with the “.net” generic Top-Level Domain (“gTLD”), while the <provigilsmart.com> domain simply appends the word “smart” and the “.com” gTLD to the mark. In neither case, the Complainant submits, do the additions sufficiently distinguish the Domain Names from its registered and well-known PROVIGIL mark. On the contrary, says the Complainant, the addition of the terms “buy,” “smart”, and “rx” actually reinforce the misleading impression of association between the Domain Names and the Complainant’s pharmaceuticals business.

The Complainant next submits that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant submits that the Respondent uses the Websites to attract Internet users seeking to buy Provigil, and then to sell the medicine without authorization. This offering of goods is not bona fide, the Complainant says, because the Respondent has no affiliation with the Complainant and has received no authorization to use the PROVIGIL mark. The Complainant also notes that “Provigil” is not a descriptive term, and as such, it has no value outside of the Complainant’s brand.

Finally, the Complainant submits that the Domain Names were registered and are being used in bad faith. Specifically, the Complainant asserts that the Respondent’s conduct meets paragraph 4(b)(iv) of the Policy, i.e., that the Respondent has used the Domain Names to attempt to achieve commercial gain - namely, the unauthorized sale of the Complainant’s products - by creating a likelihood of confusion as to source or affiliation. The Complainant argues that the Respondent registered the Domain Names with knowledge of the Complainant’s rights in the PROVIGIL mark, as shown by the fact that the Websites either directly offer or redirect to other websites that offer the Provigil drug for sale. According to the Complainant, the confusing similarity of the Domain Names to its mark shows that the Respondent is attempting to divert Internet users to the Respondent’s Websites by trading off the Complainant’s goodwill.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the Domain Names are 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 Domain Names; and

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

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

Both Domain Names entirely incorporate the Complainant’s PROVIGIL mark. The <buyprovigilrx.net> domain simply adds the dictionary words “buy” and “rx”, as well as the “.net” gTLD, to the Complainant’s registered trademark. UDRP panels have consistently held that the addition of generic or descriptive words to a complainant’s mark does not distinguish a domain name from that mark (see, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307). Consistent with that principle, the Panel finds that the two additions here do not prevent a finding of confusing similarity with the Complainant’s mark. The addition of the gTLD “.net” similarly does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11.

The same reasoning applies to <provigilsmart.com> domain, which appends the word “smart” and the “.com” gTLD to the Complainant’s mark. Neither additional element prevents a finding of confusing similarity for the reasons already given.

Accordingly, the Panel has no difficulty in concluding that both Domain Names are confusingly similar to the Complainant’s registered trademark.

B. Rights or Legitimate Interests

Many prior UDRP panels have held that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in respect of the disputed domain name.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that it has not given the Respondent permission to use its PROVIGIL mark in any way. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to either of the Domain Names.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Names. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstances set out in paragraph 4(b)(iv) of the Policy are present here.

The Respondent’s Websites purport to offer the Complainant’s PROVIGIL products for sale (Annex 8 to the Complaint). This makes clear that the Respondent had knowledge of the Complainant’s rights in the PROVIGIL mark when registering the Domain Names. The terms added to the Complainant’s mark in the Domain Names bolster this conclusion, as they appear to have been chosen specifically to attract Internet users seeking to purchase pharmaceutical products online.

The Panel has already found above that the Respondent is not authorized to use the Complainant’s mark, for the sale of goods or otherwise, yet the Respondent’s Websites purport to do just that. The necessary conclusion is that the Respondent is attempting to profit by attracting Internet users to its Websites through the creation of a likelihood of confusion with the Complainant’s mark.

The above circumstances satisfy paragraph 4(b)(iv) of the Policy and sufficiently establish bad faith registration and use on the Respondent’s part. Accordingly, the Panel finds that the Complaint succeeds with respect to the third element under paragraph 4(a) of the Policy as well.

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 Domain Names, <buyprovigilrx.net> and <provigilsmart.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: July15, 2020