{ "case_number": "CAC-UDRP-101226", "time_of_filling": "2016-06-13 11:38:33", "domain_names": [ "PROVIGILONLINEPOWER.COM" ], "case_administrator": "Lada Válková (Case admin)", "complainant": [ "Cephalon, Inc." ], "complainant_representative": "Matkowsky Law PC", "respondent": [ "Akul Hossain" ], "respondent_representative": null, "factual_background": "Complainant states that it \"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 [C-IV] 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. 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\n\"The PROVIGIL® mark is well known within its specialty area, and Complainant uses its mark online in domain names. E.g., see http:\/\/provigil.com [...]\"\r\n\r\nComplainant argues that the disputed domain name is confusingly similar to the PROVIGIL trademark because \"[i]t 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.\"\r\n\r\nComplainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name because \"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.”\r\n\r\nMoreover, according to Complainant 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).”\r\n\r\n\"Respondent is luring consumers in search of the well-known PROVIGIL brand to a website that promotes purchasing purported substitutes for Provigil, including some with allegedly the same active pharmaceutical ingredient (API) Modafinil. The site specifically promotes, 'We have listed three modafinil pills that are very popular in US and effective too, below each description we have added links for discounts and checkout page. '[...] Such use does not demonstrate a legitimate right or interest. \r\n\r\nComplainant argues that the disputed domain name was registered and is being used in bad faith because \"[t]he 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\nComplaint claims “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.\"", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the disputed domain name.", "no_response_filed": "No administratively compliant 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": [ "Douglas M. Isenberg" ], "date_of_panel_decision": "2016-07-18 00:00:00", "informal_english_translation": "Complainant states, and provides evidence to support, that it \"has extensive trademark rights in Class 5 in its PROVIGIL® mark. For purposes of this proceeding, Complainant relies on rights in the United States and Europe,\" including U.S. Reg. No. 2,000,231; and OHIM CTM Reg. No. 3,508,843.\r\n\r\nComplainant further states that \"[a] series of CAC Panels have recognized Cephalon’s rights in its PROVIGIL\/NUVIGIL marks. CAC Case Nos. 100832-100835 (transferring, amongst others, , , , , , etc.); CAC Case No. 100892 (transferring\r\n, , , , among others); CAC Case No. 101170 (transferring and ); CAC Case No. 101171 (transferring ); CAC Case No. 101173 (transferring ).\"", "decision_domains": { "PROVIGILONLINEPOWER.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }