{ "case_number": "CAC-UDRP-101155", "time_of_filling": "2016-01-22 11:41:59", "domain_names": [ "xn--5dbchrbs4c6a.com" ], "case_administrator": "Lada Válková (Case admin)", "complainant": [ "Cephalon, Inc." ], "complainant_representative": "Matkowsky Law PC", "respondent": [ "ABED AGBARIA" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nPRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAME\r\n\r\nThe Complainant claims that the disputed domain name is an internationalized domain name (\"IDN\"). IDNs permit the global community to use a domain name in their preferred language or script. This is enabled by allowing domain names to have characters from different scripts, beyond the letters (a to z), digits (0 to 9) and hyphen (-), as encoded by the Unicode standard and as allowed by relevant IDN protocols. IDNs could contain characters with diacritical marks as required by many European languages, or characters from non-Latin scripts.\r\n\r\nIn relation to the instant proceeding, when a Hebrew domain name is typed in an IDN-aware browser (or another application), the Hebrew script is automatically translated into a \"traditional\" domain name comprised of Latin characters, digits and hyphens. The translated domain name is resolved in the Domain Name System (DNS). Most modern browsers have IDN support.\r\n\r\nPunycode is a simple and efficient transfer encoding syntax designed for use with IDNs in Applications (IDNA) that was published in RFC 3492 through the Internet Engineering TaskForce (IETF)) in 2003. It uniquely and reversibly transforms a Unicode string into an ASCII string. ASCII characters in the Unicode string are represented literally, and non-ASCII characters are represented by ASCII characters that are allowed in host name labels (letters, digits, and hyphens). \r\n\r\nAccording to the Complainant the domain name in dispute is <פרוביגיל.com>, an IDN with the Punycode translation of . (The domain was identified as in the online portal because the online portal won't accept identifying the domain in dispute as \"<פרוביגיל.com>, an IDN with the Punycode translation of \" for technical reasons.)\r\n\r\nFor the Complainant to display the properly in the <פרוביגיל.com> domain name, it first had to encode it into the domain name. The Respondent in this case did so through eNom, by requesting the domain name פרוביגיל.com, indicating to eNom that the second-level domain script is in Hebrew, and having eNom convert the Hebrew script into Punycode. \r\n \r\nThe Complainant contends it is universally accepted by Panels that IDNs and their Punycode translations are equivalent for purposes of applying the Policy. E.g., Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services \/ Sergey Korshunov, WIPO Case No. D2011-0100 (transferring <порше.com> ) (Apr. 8, 2011); Saudi Arabian Oil Company v. Huloul Co., Claim No. FA1206001450578 (transferring <ارامكو-السعودية.com> [Punycode translation of ]) (July 28, 2012) (internal citations omitted).\r\n\r\nTherefore, the Complainant concludes that the <פרוביגיל.com> domain name shall be considered the same as its Punycode translation, , for purposes of this proceeding. \r\n\r\n\r\nI. Background \r\n\r\nThe Complainant Cephalon, Inc. (“Cephalon”), is an indirect, wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd. Formed in 1976, through its predecessors-in-interest, Teva Pharmaceutical Industries Ltd., together with its subsidiaries (collectively, “Teva”), was first established in 1901 with its global headquarters in Israel. Operating in sixty countries worldwide, Teva (NYSE and TASE: TEVA) (www.tevapharm.com) is ranked among the top pharmaceutical companies in the world, and the world’s largest generic medicines producer. Teva’s net revenues in 2014 amounted to $20.3 billion.\r\n\r\nThe Complainant claims and provides evidence that in specialty medicines, Teva has a world-leading position in innovative treatments for disorders of the central nervous system, including pain, as well as a strong portfolio of respiratory products. Through Teva Pharmaceuticals USA, Inc. in the United States, where the domain name subject of dispute was registered with eNom and is being hosted in Texas, Cephalon’s PROVIGIL® (modafinil) Tablets [C-IV] is part of Teva’s CNS (Central Nervous System) line of specialty medicines. It first received approval in the United States in 1998. It contains modafinil, a Schedule IV controlled substance in the United States. Subject to important safety information PROVIGIL® is indicated to improve wakefulness in adult patients with excessive sleepiness associated with narcolepsy, obstructive sleep apnea (but not as treatment for the underlying obstruction), or shift work disorder. \r\n\r\nII. Protected rights relied on by Complainant\r\n\r\nThe Complainant provides evidence it has trademark rights in Class 5 throughout the world in its PROVIGIL® mark. All of these registrations were effective before the Domain was registered. Furthermore it claims to have trademark rights also in פרוויג'יל, in Class 5, which is a Hebrew transliteration of PROVIGIL.\r\n\r\nAccording to the Complainant in Hebrew, there is no dictionary-meaning of פרוויג'יל other than as the transliteration and phonetic equivalent of PROVIGIL in Latin characters, which is also a coined term that has no dictionary meaning other than as mark known in its specialty field. A series of CAC Panels have already recognized Cephalon’s rights in the PROVIGIL mark. CAC Case Nos. 100832-100835 (transferring, amongst others, , , , , , , , ). \r\n\r\nPanels 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 Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal U.S. trademark registrations); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy only requires that complainant demonstrate a mark in some jurisdiction); Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). \r\n\r\nIII. The Domain is Substantially Identical or Confusingly Similar to the Complainant's Registered Marks.\r\n\r\nThe Complainant claims the disputed domain name <פרוביגיל.com> is nearly identical and confusingly similar to Complainant's registered PROVIGIL and פרוויג׳יל marks. There is no dictionary-meaning of פרוביגיל other than as a Hebrew transliteration and phonetic equivalent of PROVIGIL in Latin characters, and a variant spelling of Complainant's registered פרוויג'יל mark that is pronounced the same and looks almost identical. The marks פרוביגיל and פרוויג'יל create the same commercial impression in Hebrew as equivalent to PROVIGIL in Latin characters. They are substantially identical phonetically, although there may be slightly different ways that both may be pronounced from PROVIGIL depending on the Hebrew speakers' dialect, as they are not generic Hebrew words, but transliterations, intended to be phonetically equivalent to the PROVIGIL trademark. Many UDRP panels have recognized that phonetic similarity is decisive for the finding of confusing similarity under the first element of the UDRP. E.g., WhatsApp Inc. v. Fancisco Costa, WIPO Case No. D2015-1708 (Dec. 9, 2015) (finding similar pronunciation between \"wazzup\" and WHATSAPP trademark) (internal citations omitted).\r\n\r\nIt is also universally accepted that the generic top-level domain (gTLD) \".com\" is not relevant to assessing this element of the Policy. E.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). \r\n\r\nIV. The Respondent Does Not Have any Rights or Legitimate Interest in <פרוביגיל.com>.\r\n\r\nThe Complainant states the Respondent has not been commonly known by the contested domain name, and, further, 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. \r\n\r\nFurthermore, the Complainant contends the Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of paragraph 4(c)(ii) of the Policy.\r\n\r\nAccording to the Complainant Respondent's web site gives the initial impression that it is an official site authorized by the Complainant due to use of the PROVIGIL logo on the top of the site and trademark in the title. The web site is misleading. The Respondent is passing itself off as connected with or authorized by the Complainant. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. E.g., Abbott Laboratories v. Elena Blinova \/ Galina Ehlmoxsen, FORUM Claim No. FA1512001651684 (use of the ABBOTT logo) (internal citations omitted). \r\n\r\nThe Complainant claims and provides evidence that it is clear that the Respondent is promoting Modup.net, a Rogue Internet Pharmacy as a place online to purchase a purported generic \"alternative\" to Complainant's PROVIGIL®. It is also clear that the Respondent is targeting an Israeli audience as the site explains that in Israel, it is presumably hard to get a prescription for PROVIGIL®, and the best option is to purchase online through Modup.net.\r\n\r\nFurthermore, according to the Complainant the manner in which the Respondent is promoting Modup.net to Israelis by displaying Complainant's PROVIGIL® logo on the top of the homepage and throughout the site is not in compliance with the regulations concerning marketing prescription medicines in Israel. The Respondent has no legitimate interest in using a confusingly similar domain name to pass itself off as the Complainant by displaying Complainant's logo on the website, especially for a prescription medicine over the Internet in a manner that is not compliant with Israeli laws. The Respondent also has no legitimate interest in using the confusingly similar domain to promote to Israelis that they purchases a purported alternative generic from what is considered a Rogue Internet Pharmacy.\r\n\r\nEven if Respondent's promotional use of Complainant's PROVIGIL® online were in compliance with regulations concerning marketing of prescription medicines in Israel, the Respondent would still have no legitimate interest in using a domain name that is confusingly similar to Complainant's mark to drive traffic to a competitive product through click-through-links. It is presumed the Respondent realizes revenue from the operation of the carried links. In fact, the Respondent provides a coupon code to use when making a purchase at Modup.net, which presumably means the Respondent is part of its affiliate program through which it generates revenue. Using a confusingly similar domain name to promote and sell a competing product does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under paragraphs 4(c)(i) and 4(c)(iii) of the Policy.\r\n\r\nV. Bad-faith Registration and Use\r\n\r\nThe Complainant contends Respondent’s manner of use of the disputed domain name to display the PROVIGIL logo across the top and promote purchasing a purported generic alternative for Respondent's own commercial gain is clear and convincing evidence that the Respondent had actual knowledge of Complainant's marks, and registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.\r\n\r\nUnder paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that the Respondent registered the disputed domain name \"primarily for the purpose of disrupting the business of a competitor.\" Under paragraph 4(b)(iv), bad faith may be shown by evidence that \"by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.\" The Respondent has done both by registering a substantially indistinguishable domain name equivalent to Complainant's registered marks, prominently featuring Complainant's trademark logo on top of the site, and then using the Domain Name for its own financial gain to sell a purported generic alternative aimed at users seeking Complainant's products. Such conduct is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv).", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings currently pending.", "no_response_filed": "NO ADMINISTRATIVELY COMPLAINT RESPONSE HAS BEEN FILED.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Nathalie Dreyfus" ], "date_of_panel_decision": "2016-02-29 00:00:00", "informal_english_translation": "The Complainant relies on its following trademarks:\r\n\r\n- The U.S. trademark PROVIGIL No. 2000231 registered on September 10, 1996, and duly renewed thereafter until the last renewal on November 8, 2006.\r\n\r\n- The U.S. trademark PROVIGIL No. 2499937 registered on October 23, 2001, and duly renewed thereafter on October 25, 2011.\r\n\r\n- The Community trademark PROVIGIL No. 003508843 registered on March 25, 2008.\r\n\r\n- The Israeli trademark PROVIGIL No. 147877 registered on May 3, 2002 and duly renewed thereafter on February 20, 2008.\r\n\r\n- The Israeli trademark פרוויג'יל, which is the Hebrew transliteration of PROVIGIL, No. 256564 registered on January 1, 2015.\r\n\r\nThe Respondent registered the domain name on October 25, 2014.\r\n", "decision_domains": { "XN--5DBCHRBS4C6A.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }