PARTIES' CONTENTIONS:
COMPLAINANT:
SIMILARITY. Complainant contends that:
• The test of confusing similarity under the Policy is confided to a comparison of the domain name and the trademark alone. E.g., Wal-Mart Stores, Inc. v. Traffic Yoon, D2006 0812 (WIPO Sept. 20, 2006).
• The Domain is composed of the Complainant’s trademark “PROVIGIL”, together with the word “ONLINE”.
• It has been ruled many times before that when a registered name is fully incorporated in a domain, it may be sufficient for demonstrating similarity. E.g., WIPO Case No. D2007-1365. The Domain incorporates the entirety of the registered mark, with the addition of a generic term.
Therefore, according to Complainant the Domain is confusingly similar to the registered trademark in which Complainant has rights.
ABSENCE OF RIGHTS OR LEGITIMATE INTERESTS. Complainant contends that:
• Respondent has not been commonly known by the disputed domain name, and, further, Complainant has not authorized, permitted or licensed Respondent to use its trademarks in any manner. Respondent has no connection or affiliation with Complainant whatsoever.
• 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 production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. E.g., Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
• Respondent is luring consumers in search of the well-known PROVIGIL brand to a website that promotes purchasing a substitute for Provigil that purportedly has substantially the same active pharmaceutical ingredient (API).
• The site specifically promotes buying from anywhere in the world online API Modafinil from vespharmacy.com. The site delivers anywhere, including the USA without a prescription, which is illegal under the Controlled Substances Act.
BAD FAITH REGISTRATION AND USE. Complainant contends that:
• The trademark registration rights predate the domain name registration, and the allegations that the trademark is well-known in its field has not been rebutted.
• Respondent can be considered to be aware of the Complainant's trademark when registering the domain name, as obviously also follows from the way the domain name is currently being used.
• In light of the use of the disputed domain name, 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 their web sites and of the products promoted therein.
RESPONDENT:
SIMILARITY. Respondent contends that Domain name is neither identical nor confusingly similar to the protected mark, but it gives no explanation in relation with the absence of confusion.
ABSENCE OF RIGHTS OR LEGITIMATE INTERESTS + BAD FAITH REGISTRATION AND USE. Because of the specificities of case, respondent’s contention regarding the absence of right or legitimate interest, and bad faith, will be presented together. Respondent explains that :
• It is a novice website started out to spread awareness in the field of cyber-crimes and online threats. The site refers to the idea of #pro vigil online# (vigilance against online threats).
• The domain has been use for non-commercial purpose and there has been no monetary gain. Its purpose is to inform adults and teens of the potential dangers of the Internet and give them the knowledge to protect themselves.
• However the site was hacked. Apparently the hackers replaced the original content with the controversial content actually available.
• The Respondent does not monitor regularly its website and it is the reason why he was not aware of hacking before receiving the complaint.
As a result, the respondent claims that he has right and legitimate interest in registering and using the Domain, and that no bad faith can be proved against him.
ADDITIONAL INFORMATION PROVIDED BY THE COMPLAINANT:
In a non-standard communication, the Complainant asks to accept new evidence as an answer to the Respondent’s response. Such evidence is made of :
• Mails exchanged between the complainant’s attorney and the former hosting provider of the Domain. Those mails show that in February 2016, complainant’s attorney asked the hosting provider to remove the infringing material, which was accepted. Obviously, controversial content was deliberately put back by Respondent between March 206 and July 2016 (filing of the complaint).
• Print-screen of the content of the website as shown by the way back machine (archive.org), showing that the controversial content was in line since ever.
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