FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
BACKGROUND
The Complainant, Cephalon, Inc., is an indirect, wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd. Teva operates in sixty countries worldwide and is ranked among the top pharmaceutical companies in the world and as the world’s largest generic medicines producer. Its well-known Nuvigil product, a mark well known within its specialty area, aims to improve wakefulness in adults. It belongs to a group of innovative treatments for disorders of the central nervous system that have won Teva a world-leading position. Users of Nuvigil can, as one example, include workers seeking to alleviate the effects of shift work.
Nuvigil is subject to important safety information.
PARTIES’ CONTENTIONS
The Complainant contends that Panels have found that registration of a mark with a trademark authority, regardless of the location of the parties, is sufficient evidence of having rights in a mark. E.g., Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum 2002, a finding that the complainant had established rights to the MILLER TIME mark through federal U.S. trademark registrations); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO 2001, a finding that the Policy only requires that a complainant demonstrate a mark in some jurisdiction); Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum 2006, a finding that the complainant had established rights in marks where the marks were registered with a trademark authority); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum 2007, a finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The Complainant further argues that previous panel decisions have generally held that trademark registrations are valid, prima facie evidence of ownership, validity and the exclusive right to their use (e.g., Microsoft Corporation v. J. Holiday Co. WIPO case no. D2000-1493, 2000; Poarch Band of Creek Indians dba PCI Gaming Authority v. Tech Admin, Virtual Point, NAF Claim No. FA1509001639763, 2015).
In addition, the Complainant points to a series of CAC Panels which have recognized Cephalon’s rights in its PROVIGIL/NUVIGIL marks (CAC Case Nos. 100832-100835 (transferring, among others, NUVIGIL4BITCOINS.COM) and Case No. 100892 (transferring BUYNUVIGILQUICK.COM, NUVIGILQUICK.COM and NUVIGILRX.COM, among others).
CONFUSING SIMILARITY
The Complainant contends that the test of confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone (e.g., Wal-Mart Stores, Inc. v. Traffic Yoon, D2006 0812, WIPO 2006). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one (NAF Claim No. FA120001466844, 2012, citing SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007 0648, 2007).
Furthermore, the Complainant submitted that it has been ruled many times before that, when a registered name is fully incorporated in a domain, this may be sufficient for demonstrating similarity (e.g., WIPO Case No. D2007-1365). This is because the domain name incorporates the entirety of the registered mark, with the addition of generic terms. It is also universally accepted that the generic top-level domain (gTLD) “.com” is not relevant to assessing this element of the Policy.
Therefore, the Complainant concludes that the disputed domain name is confusingly similar to the registered trademark in which Complainant has rights.
NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant contends that the Respondent has not been commonly known by the disputed domain name, and, further, affirms that the Complainant has not authorized, permitted or licensed the Respondent to use its trademarks in any manner. The Respondent has no connection or affiliation with the Complainant whatsoever.
Moreover, the pertinent WHOIS information identifies the registrant, whose name does not resemble the domain name. The Complainant argues that this is evidence that the Respondent has not been commonly known by the disputed domain, citing Reese v. Morgan, FA 917029, NAF 2007.
The Complainant observes that while the overall burden of proof rests with the Complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, a Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent (e.g., Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828, NAF 2006).
The Complainant furthermore argues that the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory, citing Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095, NAF 2000, a finding that the Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true. The Complainant also cites Talk City, Inc. v. Robertson, D2000-0009, WIPO 2000, in the same connection.
Finally, the Complainant alleges, and substantiates with screenshots, that the Respondent is luring consumers in search of the well-known NUVIGIL brand to a documented rogue online pharmacy that promotes “generic” and brand name pharmaceutical products, including products arguably competitive with Complainant's NUVIGIL product, such as Modalert. Such use does not demonstrate a legitimate right or interest.
BAD-FAITH REGISTRATION AND USE
The Complainant submits that its trademark registration predates the domain name registration and that the Respondent can be considered to have been aware of the Complainant's trademark when registering the domain name, as also follows from the way the domain name is currently being used.
It further maintains that the use of the disputed domain name demonstrated in the evidence the Complainant has submitted shows the Respondent is attempting to attract, for commercial gain, internet users to its web site or to the web sites linked thereto, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site(s) and of the products promoted therein. Therefore, the requirement of bad faith registration and use of the disputed domain name pursuant to Paragraph 4(a)(iii) of the Policy has been met.
|