{ "case_number": "CAC-UDRP-100835", "time_of_filling": "2014-07-23 11:30:02", "domain_names": [ "BUYNUVIGILONLINE.COM", "GENERICPROVIGIL.NET", "BUY-PROVIGIL-GENERIC.COM", "BUYPROVIGILMED.COM", "PROVIGILGENERIC4SALE.NET", "PROVIGILONLINECHEAP.NET", "PROVIGILONLINESALE.NET" ], "case_administrator": "Lada Válková (Case admin)", "complainant": [ "Cephalon, Inc." ], "complainant_representative": "Matkowsky Law PC", "respondent": [ "Jack n Oliver" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\n\r\n\r\nThe Complainant claims that Cephalon, Inc. (“Cephalon”), an indirect wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd., is a global biopharmaceutical company with a marketed portfolio and pipeline of specialty products dedicated to improving the quality of life of individuals around the world. Since its inception in 1987, Cephalon has brought first-in-class and best-in-class medicines to patients in several therapeutic areas. \r\n\r\nAccording to the Complainant, Cephalon’s Provigil® and Nuvigil® are prescription medicines indicated to improve wakefulness in adults who experience excessive sleepiness due to obstructive sleep apnea, shift work disorder, or narcolepsy. In the United States, the schedules of controlled drugs are determined by the Drug Enforcement Agency (DEA) and are based on a drug’s potential for abuse. Both Provigil and Nuvigil are Schedule IV [C-IV] medications, because they have the potential to be abused or lead to dependence.\r\n\r\nThe Complainant relies on the PROVIGIL® Trademark and claims that the federally registered PROVIGIL® mark is well-known in its specialty field. The mark has been in continuous use is in commerce since 1995. Cephalon owns numerous registrations for the PROVIGIL® mark around the world, including but not limited to federal trademark registrations in the United States, such as: Reg. No. 2,000,231, first used in 1995, with a priority application-filing date of March 31, 1994, issued in 2006, in International Class 5.; Reg. No. 2,499,937, first used in 1995, with a foreign priority application-filing date of November 9, 1999, issued October 23, 2001, in International Class 5; and others. \r\n\r\nAccording to the Complainant, these registrations also evidence the wide scope of protection to which the PROVIGIL® mark is entitled. These registrations are incontestable pursuant to the Lanham Act, 15 U.S.C. § 1065(b), and constitute evidence of Complainant’s exclusive right to use the mark for the products and services specified in those registrations pursuant to 15 U.S.C. § 1065 and 1115(b). Provigil® is a famous and well-known mark. \r\n\r\nThe Complainant also relies on the NUVIGIL® mark and claims that since at least as early as 2009, the NUVIGIL® mark has been in continuous use in commerce. Cephalon owns numerous registrations for the NUVIGIL® mark around the world, including without limitation, federal trademark registrations in the United States, such as: Reg. No. 3,538,564, issued November 25, 2008 with a priority filing date of December May 27, 2004, in Intl. Class 5; U.S. Reg. No. 3,782,440, issued April 27, 2010, with a priority application filing date of February 11, 2009, in Intl. Class 5; and others. These registrations also evidence the wide scope of protection to which the NUVIGIL® mark is entitled. These registrations constitute evidence of Cephalon’s exclusive right to use the mark for the goods specified in these registrations pursuant to 15 U.S.C. § 1065 and 1115(b). \r\n\r\nThe Complainant states it has established rights in its PROVIGIL® and NUVIGIL® marks through registrations with the USPTO. \r\n\r\nThe Complainant claims it acquired its rights in its marks significantly prior to when the disputed domains were created in May 2014. \r\n\r\nAccording to the Complainant, the disputed domain names incorporates either the NUVIGIL® or PROVIGIL® trademark in its entirety. Moreover the Complainant contends, that it is well-settled that the addition of generic top-level domain suffix “.com” is non-distinctive because it is required for the registration of the domain name. All of the disputed domains contain the entirety of either the Nuvigil or Provigil mark with the addition of generic terms or phrases describing the offering for sale of the trademarked-medicines (i.e., “buy,” “generic,” “med,” \"4sale\" \"online cheap\"). \r\n\r\nTherefore, in the Complainant’s view the disputed domain names are clearly confusingly similar to the NUVIGIL or PROVIGIL trademarks and, as a result, the requirement of paragraph 4(a)(i) of the Policy is met.\r\n\r\nThe Complainant states that the Respondent has never been licensed, authorized or otherwise permitted to use the disputed domain names or any other domain name using the Complainant’s trademark. The Respondent is not known by the disputed domain names, nor has the Respondent acquired any trademark rights in respect of the domain names. Furthermore, the Respondent’s use of the disputed domain names do not satisfy the test for bona fide use established in prior UDRP panel decisions as the disputed domain names are being, or have been, used to re-direct visitors to two rogue online pharmacies, , and , offering competitive products and purported generic versions or variations of the trademarked medicines. \r\n\r\nThe Complainant contends that the Respondent has used and\/or continues to use the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to websites by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of the websites or of products available at the websites or through the sites. \r\n\r\nThe Respondent currently continues to use to divert users to and , , and to divert users to .\r\n\r\nThis is not a legitimate noncommercial or fair use under the Policy. The Respondent uses the disputed domain names for commercial gain with the purpose of capitalizing on the Complainant’s trademarks, and the domain names clearly allude to the Complainant. \r\n\r\nThere is no reason why the Respondent should have any right or interest in any of the disputed domain names. To the extent Respondent is offering generic products under Complainant’s marks, and not accurately or prominently disclosing its relationship with the trademark owner, there is no question that the Respondent’s use of the disputed domain names does not satisfy the requirements for bona fide use. \r\n\r\nThe Complainant claims that although currently has recently been suspended by GoDaddy for spam and abuse, this domain previously pointed to the rogue online pharmacy to confuse users into buying a purported generic being marketed as \"generic Nuvigil\" brand. \r\n\r\nSimilarly, the subject domain names and were recently suspended by GoDaddy on July 9, 2014 for spam and abuse. They previously pointed to the rogue online pharmacy Pillbury.com. \r\n\r\nAlthough currently, the above domain names , and resolve to inactive websites presumably after GoDaddy suspended them for spam and abuse, Respondent will again presumably enable the resolving websites through a different website host; after all, Respondent continues to use to divert users to , , and to divert users to http:\/\/www.pillburry.com\/. Prior panels have frequently concluded that failing to make an active use of the disputed domain name does not establish rights or legitimate interests in the disputed domain name. \r\n\r\nIn light of the foregoing, the Complainant claims that the requirement of paragraph 4(a)(ii) of the Policy is met.\r\n\r\nThe Complainant states that there is no doubt the Respondent was aware of the existence of Cephalon’s marks. Only someone who was familiar with the Complainant’s marks and its activity would have registered the domain names with the addition of a generic term or phrase describing the offering for sale of the trademarked-medicines (i.e., “buy,” “generic,” “med,” \"4sale\" \"online cheap\"). There is no information as to the business activity of the Respondent that would justify the registration and the use of the domain names, nor is there evidence of any rights or legitimate interests in the domain names by the Respondent. In the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the domain names confusingly similar to the Complainant’s trademarks was done in bad faith. The use of the domain names as evidenced is also in bad faith because the Respondent is intending to attract the Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites. Id.; UDRP Policy Paragraph 4(c)(iv).\r\n\r\n \r\n", "other_legal_proceedings": "None of which the Panel is aware.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n", "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": [ "Matthew Harris" ], "date_of_panel_decision": "2014-08-21 00:00:00", "informal_english_translation": "See \"Factual Background\" and \"Principal Reasons for Decision\" below.", "decision_domains": { "BUYNUVIGILONLINE.COM": "TRANSFERRED", "GENERICPROVIGIL.NET": "TRANSFERRED", "BUY-PROVIGIL-GENERIC.COM": "TRANSFERRED", "BUYPROVIGILMED.COM": "TRANSFERRED", "PROVIGILGENERIC4SALE.NET": "TRANSFERRED", "PROVIGILONLINECHEAP.NET": "TRANSFERRED", "PROVIGILONLINESALE.NET": "TRANSFERRED" }, "panelist": null, "panellists_text": null }