In order to obtain the transfer of the disputed domain names the UDRP Policy (paragraph 4(a)) requires that the Complainant proves each and all of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
I. RIGHTS OF THE COMPLAINANT AND IDENTITY OR CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAMES TO THE COMPLAINANT'S MARK
The Complainant has provided sufficient documentary evidences to demonstrate to be owner of the PROVIGIL Trademark since 1978.
This Panel conducted a straightforward side-by-side comparison of the disputed domain names and the textual components of the Complainant's mark to access whether the PROVIGIL Trademark is recognizable within the disputed domain names. The disputed domain names, without exception, incorporate the entirety of the dominant and distinctive part of the PROVIGIL Trademark (i.e. the wording PROVIGIL). While each case is judged on its own merits, in UDRP cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark under the first element of the UDRP (see paragraph 1.7 WIPO Overview 3.0).
In registering the disputed domain names the Respondent added letters and/or numbers to the relevant mark, particularly:
BUYPROVIGILMZ.COM: added the generic word "buy" before the Complainant's mark followed by the letters "mz",
PROVIGIL1ST.COM: added the number and letters "1st" to the Complainant's trademark,
PROVIGILB3.COM: added the letter and number "b3" to the Complainant's trademark,
PROVIGILVUC.COM: added the letters "vuc" to the Complainant's trademark,
PROVIGILBTC.COM: added the letters "btc" to the Complainant's trademark,
PROVIGILINB.COM: added the letters "inb" to the Complainant's trademark,
PROVIGILDCR.COM: added the letters "dcr" to the Complainant's trademark,
PROVIGILLSK.COM: added the letters "lsk" to the Complainant's trademark,
PROVIGILXMR.COM: added the letters "xmr to the Complainant's trademark,
PROVIGILNEM.COM: added the letters "nem" to the Complainant's trademark,
PROVIGILCHT.COM: added the letters "cht" to the Complainant's trademark,
PROVIGILPOD.COM: added the letters "pod" to the Complainant's trademark,
PROVIGILKR.COM: added the letters "kr" to the Complainant's trademark,
PROVIGILKS.COM: added the letters "ks" to the Complainant's trademark,
PROVIGIL17.COM: added the number "17" to the Complainant's trademark,
PROVIGILBIT.COM: added the letters "bit" to the Complainant's trademark.
According to the assertions of the Complainant, accepted as true by this Panel, some of these additional letters and/or numbers are cryptocurrency and blockchain technology-related terms or abbreviations ("b3" for B3Coin, "vuc" for Virta Unique Coin, "btc" for bitcoin, "inb" for INBlockchain, "dcr" for Decred cryptocurrency, "lsk" for Lisk blockchain application platform, "xmr" for Monero cryptocurrency, "nem" for nem distributed ledger technology, "cht" for charitySPACE blockchain-based platform).
In the view of this Panel such additional generic word, letters and/or numbers (even if some of them are to be considered as abbreviations of cryptocurrency or blockchain technology-related terms) neither effects the attractive power of the Complainant's trademark, nor are sufficient to negate the confusing similarity between the disputed domain names and such mark.
The content of the website associated with the domain name is usually disregarded by UDRP Panels when assessing confusing similarity under the first element. In some instances, Panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (see paragraph 1.9 of WIPO Overview 3.0).
In the dispute at hand, nearly all websites associated with the disputed domain names (except for <PROVIGILCHT.COM>) advertise the online purchase of PROVIGIL or a generic equivalant. Thus, it is clear the Respondent had in his mind the Complainant's PROVIGIL Trademark and intended to create confusion with such mark by registering the disputed domain names.
All disputed domain names are registered under the top-level domain (TLD) .com. UDRP Panels agree that TLD is usually disregarded for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark as it is a technical requirement of registration (see paragraph 1.11.1 WIPO Overview 3.0).
Hence, this Panel finds that the disputed domain names are confusingly similar to the Complainant's mark. The similarity of the disputed domain names to the PROVIGIL Trademark is likely to lead to confusion and/or association for the Internet users.
Accordingly, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the UDRP Policy.
II. LACK OF RIGHTS OR LEGITIMATE INTERESTS
It is a consensus view of UDRP Panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see paragraph 2.1 of the WIPO Overview 3.0: "[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.")
The Panel finds that the Respondent, Ilgam Nurtdinov, lacks rights or legitimate interests in the disputed domain names for the following reasons:
- The Complainant states that it has no relationship with the Respondent whatsoever and the Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's trademark or any other mark identical or confusingly similar to such mark.
- There is no evidence that the Respondent has been commonly known by the disputed domain names or has acquired any rights in a trademark or trade name corresponding to the disputed domain names.
- All websites associated with the disputed domain names (except for <PROVIGILCHT.COM>) advertise the online purchase of PROVIGIL or its generic equivalent without prescription. Clicking on the link present on the website redirects to a rogue online pharmacy website involved in propagating malware. Such use is clearly not a bona fide, legitimate or fair use under the UDRP Policy.
- The domain name <PROVIGILCHT.COM> does not resolve to any active website. However, the totality of the circumstances supports the finding that it is unlikely that there is any legitimate interest in the registration of the domain name by the Respondent without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
Thus, the Panel finds that the Complainant has established its prima facie case and the Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests in the disputed domain names.
The Panel is, therefore, satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the UDRP Policy.
III. REGISTRATION AND USE IN BAD FAITH
The Panel considered the following circumstances in finding that the disputed domain names have been registered and are being used in bad faith.
The Respondent has registered 16 domain names incorporating the entirety the Complainant's well-known prior trademark, hence, confusingly similar to such mark. Given the distinctiveness and reputation of the Complainant's trademark worldwide, it is inconceivable that the Respondent could have registered the disputed domain names without actual knowledge of the Complainant's rights in the trademarks. Thus, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's marks. Such finding is also supported by the content of the websites associated with the domain names. 15 of 16 domain names resolve to a website, containing an ad "BUY PROVIGIL (MODAFINIL) WITHOUT PRESCRIPTION". Clicking on the link present on the website redirects to a rogue online pharmacy website involved in propagating malware. One of the disputed domain names is not actively used, but considering all factors (the degree of distinctiveness and reputation of the Complainant’s mark, the failure of the Respondent to submit a Response or to provide any evidence of actual or contemplated good faith use and the pattern of conduct in which the Respondent is engaged, since he registered other 15 domain names confusingly similar with the Complainant's mark used for malware activities), it is implausible that there is any good faith use to which such disputed domain name may be put.
The Panel finds that the Complainant has discharged the burden of proof to show that the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the UDRP Policy).
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