{ "case_number": "CAC-UDRP-101858", "time_of_filling": "2018-01-26 09:12:10", "domain_names": [ "buyprovigilmz.com", "provigil1st.com", "provigilb3.com", "provigilvuc.com", "provigilbtc.com", "provigilinb.com", "provigildcr.com", "provigillsk.com", "provigilxmr.com", "provigilnem.com", "provigilcht.com", "provigilpod.com", "provigilkr.com", "provigilks.com", "provigil17.com", "provigilbit.com" ], "case_administrator": "Aneta Jelenová (Case admin)", "complainant": [ "Cephalon, Inc." ], "complainant_representative": "RiskIQ, Inc c\/o Jonathan Matkowsky", "respondent": [ "Ilgam Nurtdinov" ], "respondent_representative": null, "factual_background": "The Complainant asserts and provides evidentiary documentation of the following facts, which are not contested by the Respondent.\r\n\r\nThe Complainant, is an indirect, wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd., a global pharmaceutical company. 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.\r\n\r\nThe Complainant's product commercialized as PROVIGIL is part of Teva’s CNS (Central Nervous System) line of specialty medicines. It contain modafinil, a Schedule IV federally 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. PROVIGIL is well known within its specialty area, and safety information is available at the website .\r\n\r\nThe Complainant contends that the disputed domain names are confusingly similar to its distinctive and well-known PROVIGIL Trademark, because they incorporate the entirety of the Complainant's trademark with the addition of terms and characters which appear to descriptively relate to purchase PROVIGIL with cryptocurrency and blockchain tecnology and, thus, are inadequate to negate the confusing similarity but rather to imply an authorized connection with the Complainant or its mark. Moreover, according to the Complainant, the content of the relevant websites advertising the online purchase of PROVIGIL supports the confusing similarity between the domain names and the Complainant's mark. \r\n\r\nThe Complainant submits that the Respondent does not have any rights or legitimate interest in the disputed domain names.\r\n\r\nThe Respondent has not been commonly known by the disputed domain names, and, further, Complainant has not authorized, permitted or licensed Respondent to use its trademarks in any manner. Respondent has no connection or affiliation with the Complainant whatsoever.\r\n\r\nAll of the disputed domain names except land on a commercial ad to an online pharmacy offering the “Highest Quality Generic Drugs” specifically including purportedly PROVIGIL dosages in 100 or 200 mg packages of between 10 and 360 pills. The ad on each landing page invites to click on a link to “Buy Provigil (Modafinil) Without Prescription” with bitcoin or a credit card. With respect to , it is currently showing an error that may be due to misconfiguration of the server, but given the totality of the circumstances with all of the other disputed domain names pointing to the same commercial ad to buy PROVIGIL online without a prescription, it is implausible that has any good faith intended use to which the domain name may be put and was or is likely to be used in the same manner as all of the other ones Respondent registered and uses. When clicking on the link, most browsers appear to block the online pharmacy displaying a malware warning that an infection was detected, and that the requested URL contains malicious code that can damage your computer. According to LegitScript, this online pharmacy is a rogue Internet Pharmacy website. The site itself holds itself out as a Canadian pharmacy offering a wide range of products in a wide range of categories but there is no information available when clicking on \"About Us\". Furthermore, the checkout page clearly ships to the United States where it is unlawful to purchase PROVIGIL online without a prescription.\r\n\r\nThe cryptocurrency-related abbreviations appended to the PROVIGIL mark do nothing in and of themselves to negate an affiliation with the trademark owner, but in the context of advertising the online purchase of PROVIGIL to be mailed anywhere in the world (which is illegal in the United States where it is a controlled substance) or of a purported competitive generic equivalent using a bait-and-switch tactic, weighs in favor of finding no legitimate interest by Respondent.\r\n\r\nConsidering that PROVIGIL is a prescription medicine not offered for sale online by the Complainant, and the Respondent is diverting traffic to a rogue Internet pharmacy not approved the Complainant, it appears the domain names are a pretext for commercial gain inhering to Respondent's benefit. The domains do not praise or criticize, which may otherwise suggest Respondent believed use of the disputed domain names to be truthful and well-founded. Respondent did not go out of his way to ensure that it would be clear to Internet users visiting the Respondent’s website that it is not operated by the Complainant as there is no disclaimer of any kind on the landing pages leading to the rogue Internet pharmacy, and no prominent link or explanatory text provided to the Complainant's website. Furthermore, the fact that the commercial ads for purchasing PROVIGIL without a prescription online lead to a documented rogue Internet pharmacy possibly infested with malware and purporting to sell related \"sleep-aid\" drugs manufactured by the competitors of the Complainant placed in the same category as PROVIGIL on the site does not support any possible claim to rights or legitimate interests. The record in the instant case does not reflect the Respondent's observance of the Oki Data criterias.\r\n\r\nRespondent is luring consumers in search of the well-known PROVIGIL brand to a website that assuming is not malware-infested, promotes purchasing PROVIGIL illegally by mail including in the United States (the check-out page to the United States and the display of the US Postal Service icon), or substitutes a generic variation using the PROVIGIL packaging and mark to promote the sale of, and confuse people into thinking they are buying PROVIGIL by falsely claiming it is known by other brand names such as \"Modalert\" and \"Modvigil\" not offered by the Complainant.\r\n\r\nThe Complainant also states that the disputed domain names have been registered and are being used in bad faith.\r\n\r\nThe trademark registration rights predate the domain name registrations, and the allegations that the trademark is well-known in its field has not been rebutted. The Respondent can be considered to be aware of the Complainant's trademark when registering the domain names, as obviously also follows from the way the domain names are currently being used and the number of domains registered in the instant proceeding.\r\n\r\nThe Respondent is clearly attempting to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the online location and of the products offered for sale thereon.\r\n\r\nMoreover, PROVIGIL comes with safety precautions and warnings as well drug interactions and adverse reactions that Respondent omits from his description of what he deems to be important to know about taking PROVIGIL. For example, Respondent says in plain small type beneath the offering that PROVIGIL can cause skin reactions that may be severe enough to need treatment in a hospital, but the one from PROVIGIL says that it that may affect parts of your body such as your liver or blood cells, and need to be treated in a hospital because it may be life-threatening. Other warnings are omitted such as that PROVIGIL is not approved for use in children for any medical condition, and that it is not known if PROVIGIL is safe or effective in children under 17 years of age. Exploiting the PROVIGIL mark to sell even a generic equivalent (assuming this is a bait and switch tactic as opposed to actual illegal sales of PROVIGIL over the Internet to the United States contrary to the FDA) in a manner that confuses people into thinking that they have the most important information they need to take PROVIGIL safely constitutes bad-faith registration and use.\r\n\r\nThe Complainant, therefore, requests the transfer of the disputed domain names.", "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain names.", "no_response_filed": "No administratively complaint Response has been filed.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed 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 disputed 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 disputed 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": [ "Avv. Ivett Paulovics" ], "date_of_panel_decision": "2018-03-14 00:00:00", "informal_english_translation": "The Complainant is owner of the following trademarks:\r\n\r\nInternational (word) trademark no. 438439 \"PROVIGIL\" registered on June 28, 1978, duly renewed, in Class 5 for Pharmaceutical products, namely prescription drugs, with designation under the Madrid Protocol in Austria, Benelux, Switzerland, Germany, France, Hungary, Italy, Kenya, Liechtenstein, Lesotho, Morocco, Monaco, Mozambique, Portugal, Romania, Serbia, Russia, Swaziland.\r\n\r\nUS (word) trademark no. 74507491 \"PROVIGIL\" filed on March 31, 1994, registered on September 10, 1996, duly renewed, in Class 5 for pharmaceutical preparations for the treatment of human sleep disorders.\r\n\r\nUS (device) trademark no. 76033426 \"PROVIGIL\" filed on April 21, 2000, registered on October 23, 2001, duly renewed, in Class 5 for Cachets, pills, pastilles and drops for pharmaceutical purposes stimulating daytime vigilance and cognitive + psychomotor performances.\r\n\r\nInternational (device) trademark no. 735867 \"PROVIGIL\" registered on May 9, 2000, duly renewed, in Class 5 for Pharmaceutical products, with designation under the Madrid Protocol in the United Kingdom, Italy.\r\n\r\nIsreali (word) trademark no. 147877 \"PROVIGIL\" filed on March 23, 2001, registered on March 5, 2002, duly renewed, in Class 5 for Pharmaceutical preparations namely, pharmaceutical preparations stimulating daytime vigilance, cognitive and psychomotor performances.\r\n\r\nEUTM (word) no. 003508843 \"PROVIGIL\" filed on October 31, 2003, registered on August 25, 2008, duly renewed, in Class 5 for Pharmaceutical preparations for combatting excessive daytime sleepiness associated with narcolepsy, idiopathic hypersomnia, attention deficit, hyperactivity disorders, obstructive sleep apnea and other conditions related to excessive daytime sleepiness.\r\n\r\nMexican (word) trademark no. 900042 \"PROVIGIL\" filed on August 4, 2004, registered on September 22, 2005, duly renewed, in Class 5 for pharmaceutical preparations for the treatment of human sleep disorders.\r\n\r\nThe above-mentioned trademarks are hereinafter referred to as the PROVIGIL Trademark.", "decision_domains": { "BUYPROVIGILMZ.COM": "TRANSFERRED", "PROVIGIL1ST.COM": "TRANSFERRED", "PROVIGILB3.COM": "TRANSFERRED", "PROVIGILVUC.COM": "TRANSFERRED", "PROVIGILBTC.COM": "TRANSFERRED", "PROVIGILINB.COM": "TRANSFERRED", "PROVIGILDCR.COM": "TRANSFERRED", "PROVIGILLSK.COM": "TRANSFERRED", "PROVIGILXMR.COM": "TRANSFERRED", "PROVIGILNEM.COM": "TRANSFERRED", "PROVIGILCHT.COM": "TRANSFERRED", "PROVIGILPOD.COM": "TRANSFERRED", "PROVIGILKR.COM": "TRANSFERRED", "PROVIGILKS.COM": "TRANSFERRED", "PROVIGIL17.COM": "TRANSFERRED", "PROVIGILBIT.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }