{
    "case_number": "CAC-UDRP-101228",
    "time_of_filling": "2016-06-13 11:41:56",
    "domain_names": [
        "provigilstore.com"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Cephalon, Inc."
    ],
    "complainant_representative": "Matkowsky Law PC",
    "respondent": [
        "Sandeep  Ghume "
    ],
    "respondent_representative": null,
    "factual_background": "*** Excerpts from the Complaint\r\n(references to annexes omitted)\r\n\r\nBACKGROUND\r\n\r\nComplainant 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\nIn 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.\r\n\r\nCephalon’s PROVIGIL® (modafinil) Tablets [CIV] are part of Teva’s CNS (Central Nervous System) line of specialty medicines. They contain modafinil, a Schedule IV federally controlled substances in the United States.\r\n\r\nSubject 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\nThe PROVIGIL® mark is well known within its specialty area, and Complainant uses its mark online in domain names. (...)\r\n\r\nCONFUSING SIMILARITY (ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i))\r\n\r\nThe test of confusing similarity under the Policy is confided to a comparison of the domain name and the trademark alone. E.g., WalMart Stores, Inc. v. Traffic Yoon, D2006 0812 (WIPO Sept. 20, 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. Forum Claim No. FA120001466844 (Dec. 22, 2012) (citing SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007 0648 (July 11, 2007).\r\n\r\nIt 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. D20071365. The Domain incorporates the entirety of the registered mark, with the addition of a generic term. It is also universally accepted that generic top-level domains (gTLDs) such as \".com\" or \".org\" are not relevant to assessing this element of the Policy. E.g., Pomellato S.p.A v. Tonetti, D20000493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).\r\n\r\nTherefore, the Domain is confusingly similar to the registered trademark in which Complainant has rights.\r\n\r\nNO RIGHTS OR LEGITIMATE INTERESTS (ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii))\r\n\r\nRespondent 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.\r\n\r\nMoreover, the pertinent WHOIS information identifies the registrant, which does not resemble the domain name. On this record, 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 Policy ¶ 4(c)(ii). E.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding, under Policy ¶ 4(c)(ii), that a UDRP respondent was not commonly known by a contested domain name where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize that respondent’s use of its mark in the domain name).\r\n\r\nWhile 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. \r\n\r\nOnce 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).\r\n\r\nThe Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D20000009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).\r\n\r\nRespondent is luring consumers in search of the well-known PROVIGIL brand to a \"Provigil Store\" that promotes purchasing a variety of substitutes for Provigil, some of which purport to have the same active pharmaceutical ingredients. The site also specifically promotes \"Provigil Without Prescription Available on Reliable Online Pharmacy,\" falsely advertising the generic name as \"Provigil,\" and offering \"Modawake\" as a substitute under the Provigil brand with free shipping. The site delivers anywhere, including the USA without a prescription, which is illegal under the Controlled Substances Act. Such use does not demonstrate a legitimate right or interest. E.g., F. Hoffmann-La Roche AG v. Aleksandr Bannikov, WIPO Case No. D20150066; Eli Lilly and Company v. Igor Palchikov, FA 1105001388612; Lilly ICOS LLC v. Alexey Stoun, WIPO Case No. D20061170.\r\n\r\nBADFAITH REGISTRATION AND USE\r\n\r\nThe 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.\r\n\r\nIn 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. E.g., Cephalon, Inc. v Alen Mironassyan, Alen Mironassyan, CAC Case No. 100892. Therefore, the requirement of bad faith registration and use of the disputed domain name pursuant to article 4(a)(iii) of the Policy has been met.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": "Respondent filed a response reproduced here in its entirety:\r\n\r\n\"complainant's claiming that word \"provigil\" is patented by cephalon INC, But the domain name is provigilstore.com its not a single word provigil.\r\n\r\nfor e.g if your website name is udrp, and if i take domain name udrpinc.com that does not mean i am violating\r\nany rule.\r\n\r\nComplainant has a bad intention behind this complaint as they do not want others to make business.\r\nI will respect the judgement passed by judiciary.\"",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of UDRP).",
    "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 UDRP).",
    "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 UDRP).",
    "procedural_factors": "This 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": [
        "Dr. Cédric Manara"
    ],
    "date_of_panel_decision": "2016-07-17 00:00:00",
    "informal_english_translation": "The Complainant relies on rights in the PROVIGIL trademark registered in the United States under number 2000231 and in the European Union under number 003508843.",
    "decision_domains": {
        "PROVIGILSTORE.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}