WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sepracor Inc. v. graphicsmachine.com
Case No. D2007-0646
1. The Parties
The Complainant is Sepracor Inc., Marlborough, MA, United States of America, of United States of America, represented by Latham & Watkins, United States of America.
The Respondent is graphicsmachine.com, Omaha, Nebraska, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <buy-lunesta.biz>, is registered with GoDaddy.com, Inc.
3. Procedural History
Sepracor Inc. filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2007, and named DomainsByProxy, Inc. as Respondent. At that time, DomainsByProxy, Inc. appeared in GoDaddy.com’s WHOIS database as the Registrant of <buy-lunesta.biz>. On April 30, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. Eight hours later, GoDaddy.com, Inc. responded to the Center and stated graphicsmachine.com was the actual Registrant of the disputed domain name; it provided the Registrant’s administrative and technical contact details.
On May 2, 2007, the Center informed Complainant of the registrant identity and contact details provided by GoDaddy.com, Inc. The next day Complainant filed an amendment to the Complaint that identified the correct Registrant as Respondent. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2007.
The Center appointed Steven L. Snyder as the sole panelist in this matter on June 14, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
“Eszopiclone” is the generic name for a non-benzodiazepine, oral, sedative drug that is used for treating insomnia. But Complainant would prefer you avoid that tongue-twister and simply call the drug by its brand name, LUNESTA. Since April 1, 2005, Complainant has used the LUNESTA trademark in connection with sleeping pills.
To protect its rights in the heavily-advertised mark, Complainant has obtained two trademark registrations from the United States Patent & Trademark Office (“USPTO”). See USPTO reg. nos. 3133744 &3187447. It currently has two applications pending before the USPTO. See USPTO serial nos. 78867683 and 78867687. Both of the pending applications feature the brand’s mascot, a luna moth. In addition, Complainant has obtained three international trademark registrations via the Madrid Protocol. See Intl’s Regs. Nos. 898479 (“LUNESTA” word mark and luna moth); 898626 (same); and 898627 (word mark).
Just one month after Complainant started using the LUNESTA mark in commerce, Respondent registered the disputed domain name, <buy-lunesta.biz>, with GoDaddy.com, Inc. Rather than reveal its true identity to the world, Respondent utilized the services of DomainsByProxy, Inc. This company presents itself in the Whois database as the domain name’s registrant of record. That stance permits legitimate companies to avoid having their contact information available to spammers – and permits illegitimate companies to avoid being readily accessible by aggrieved trademark owners.
At the time the Complaint was filed, the disputed domain name took an Internet user to a website that looked very similar to the one Complainant operates. But there were some differences. In addition to the LUNESTA brand, Respondent’s website also offered to sell “Ambien” and “Rozerem” sleeping bills – both of which are produced by competitors to Complainant. Another difference was Respondent’s website offered the prescription LUNESTA-brand sleeping pills without a prescription; all a user had to do was answer thirteen questions including this gem: “While taking this medication, do you agree to consult your pharmacist?”
5. Parties’ Contentions
Tracking the Policy, Complainant presents three arguments.
First, Complainant argues that the disputed domain name is identical “in all material respects” to a mark, LUNESTA, it which it has rights. Complainant recognizes the disputed domain name contains the word “buy” and its mark does not, but summarily dismisses this difference as inconsequential. Regarding its rights, Complainant claims common law rights in its mark, cites its United States registrations, and lists fourteen domain names it owns that incorporate the LUNESTA mark.
Second, Complainant maintains that Respondent does not have any rights or legitimate interests in respect of the disputed domain name. Complainant states that it has never “licensed or otherwise permitted Respondent to use Complainant’s LUNESTA trademark, or to register any domain name including the LUNESTA trademark.” It claims there is no relationship between the parties. It says that Respondent had no legitimate reason to choose a domain name that is “almost an exact duplicate of a famous and distinctive trademark.” The only reason for doing so, it argues, was to create a false impression of an association with Complainant. Moreover, the website linked to the disputed domain name has the same “look and feel” of Complainant’s website. This is evidence of Respondent’s illegitimate “efforts to confuse consumers and trade off of Complainant’s famous LUNESTA trademark.”
Third, Complainant argues that Respondent has registered and used the disputed domain name in bad faith. It claims Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business. Additionally, Complainant argues that Respondent has intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s LUNESTA mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The confusion may be dangerous, Complainant suggests. It says the “Lunesta prescription sleep drug” is classified as a “Schedule-IV drug subject to specific monitoring and enforcement by the Drug Enforcement Administration.” Yet the drug apparently is obtainable through Respondent’s website “without the consultation and advice of a medical doctor.” This may result, Complainant warns, in “the potential misuse and abuse” of the drug.
Based on these three arguments, Complainant requests that the registration for <buy-lunesta.biz> be transferred to its possession.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail in a proceeding, the Policy requires that a complainant prove three elements are true: First, that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy paragraph 4(a)(i). Second, that the respondent has “no rights or legitimate interests in respect of” the disputed domain name. Id. paragraph 4(a)(ii). Third, that the disputed domain name was registered and is being used in “bad faith.” Id. paragraph 4(a)(iii). Complainant has presented convincing evidence, and without contradiction by Respondent, on each of these three elements.
A. Identical or Confusingly Similar
There are two insignificant differences between the disputed domain name <buy-lunesta.biz>, and Complainant’s LUNESTA mark: The word “buy” and the TLD “.biz.” Neither difference distinguishes the domain name from the mark.
As numerous Panels have recognized, consumers do not distinguish between a mark and a domain name that is nothing more than the mark bundled with descriptive or generic words that frequently accompany the mark in advertising and common usage: “Further the addition of the generic terms “pianeta,” [planet], “super” and “mondo” [world] does not make the domain names dissimilar to the trademark in which the Complainant has rights.” F. Hoffmann-La Roche AG v. AndrewZZZ, WIPO Case No. D2006-0357; accord RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540 (“The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.”).
The addition of a TLD to a mark also does not lessen the similarity between a domain name and a mark. The TLD is similar to an area code in a phone number, it simply steers the Internet user to the right spot and does not serve as a distinguishing indication of origin: “It is a principal which applies to UDRP Cases, that the addition of a TLD does not affect the confusing similarity or identity between the domain name and the trademark . . . ” Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001.
The disputed domain name and the mark are confusingly similar – and the Complainant has rights in that mark. Due to a massive advertising electronic and print advertising campaign, Complainant has strongly associated LUNESTA with sleeping pills (and large green moths that invade bedrooms at night). Its common law rights in the mark are buttressed by the rights which stem from its International and USPTO trademark registrations.
Complainant has presented sufficient evidence to establish the first element under the Policy. See Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Rules impose the burden on Complainant to prove “why the Respondent . . . should be considered as having no rights or legitimate interests in respect of the domain name.” Rules, paragraph 3(b)(ix)(2). Complainant has met its burden: Complainant and Respondent do not have any relationship; Complainant has never licensed or permitted Respondent to use LUNESTA; the mark is not a common word that might innocently have been adopted by Respondent; and the website deliberately copies the look and feel of Complainant’s website.
Based on this evidence, and without any contradictory argument from Respondent, the Panel concludes that Respondent’s actions were deliberate attempts to trade off of Complainant’s mark and to divert consumers for commercial gain. These actions show that Respondent lacks rights or legitimate interests in the disputed domain name. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding no rights or legitimate interests where respondent used complainant’s arbitrary mark in domain name); cf. Policy paragraph 4(c) (listing means of proving rights and interests).
Complainant has presented sufficient evidence to establish the second element under the Policy. See Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy provides four examples of the bad faith registration and use of a domain name. The one example that most clearly applies in this Proceeding is the following: “[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” See Policy paragraph 4(b)(iv).
Respondent has taken the well-known LUNESTA mark, incorporated the mark into a domain name that is confusingly similar to the mark, and linked the domain name to a website that copies the look and feel of Complainant’s own website. At Respondent’s website, it offers LUNESTA-brand sleeping pills as well as other sleeping pills from Complainant’s competitors. Clearly, Respondent’s intends to profit from its confusing use of Complainant’s mark in the disputed domain name, <buy-lunesta.biz>. This behavior falls squarely within the Policy’s example of bad faith registration and use. See Policy paragraph 4(b)(iv); Bellsouth Intellectual Property Corp. v. Netsolutions Proxy Services, WIPO Case No. D2005-0169.
Complainant has presented sufficient evidence to establish the third and final element under the Policy. See Policy paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buy-lunesta.biz> be transferred to Complainant.
Steven L. Snyder
Date: June 28, 2007