Paragraph 4(a) of the Policy provides that to obtain the transfer of the domain name, the Complainant must prove that each of the following elements is present:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A) The disputed domain name <nuvigil-review-online.com>, is comprised of the Complainant’s trade mark NUVIGIL plus the generic wording "-review-online" to create the domain name <nuvigil-review-online.com>. The most distinctive part of the disputed domain name is Complainant’s mark NUVIGIL. Adding generic words to this mark do not prevent the disputed domain name being confusingly similar to the Complainant's trade mark NUVIGIL. In addition, it must be considered that the relevant comparison to be made is with the first portion of the domain name only (i.e., “nuvigil-review-online"), as it is well-established that the top-level domain name “.com” should be disregarded for this purpose (see Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark NUVIGIL. Therefore, in the Panel's view the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B) The Complainant has long standing rights in the mark NUVIGIL. The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and as the Respondent was never authorized or licensed or otherwise permitted by the Complainant to use the disputed domain name. The Respondent, in the absence of any response, has not shown any facts or elements to justify legitimate rights or interests in the disputed domain name. Therefore, on the basis of the evidences submitted and in the absence of a response the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C) Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate that the Domain Name was registered and used in bad faith, as follows:
(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the domain name in dispute was both registered and is being used in bad faith. As regards to bad faith registration, the evidence shows that Complainant's trademark NUVIGIL was registered long before the registration of the domain name in dispute. In addition, the Complainant has demonstrated to the satisfaction of this Panel that the Complainant's trademark NUVIGIL is well-known, as confirmed also by previous UDRP decisions mentioned by the Complainant (see in particular Cephalon, Inc. v. Alen Mironassyan CAC Case No. 100892). The Panel therefore finds that the domain name in dispute was registered in bad faith by the Respondent since there is no doubt the Respondent, at the time of the registration of <nuvigil-review-online.com>, was aware of the existence of Complainant's mark. The Respondent's use of the domain name in dispute is not "bona fide" because the Respondent uses said domain name also to promote brain vitamins unrelated to Complainant's product NUVIGIL. Therefore, as far as bad faith use of the domain name is concerned, the Panel accepts the Complainant's contention that by using the disputed domain name to promote products purportedly competitive with Complainant's product, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source or sponsorship of the website, within the meaning of Paragraph 4(b)(iv) of the Policy (see Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 and Swarovski Aktiengesellschaft v. Domain Admin, PrivacyProtect.org / Robert S. Rayford WIPO Case No. D2012-2494).
The Complainant has therefore demonstrated, to the satisfaction of the Panel, that the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
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