The Complainant is Sepracor Inc., Marlborough, Maryland, United States of America (“United States” or “US”), represented by Latham & Watkins LLP, United States.
The Respondent is N/A Nadegda Vandar, Odessa, Ukraine.
The disputed domain name <lunestaeszopiclone.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2010. On January 18, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On January 21, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on February 17, 2010.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 24, 2010. 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.
The Respondent registered the Domain Name on October 11, 2009.
The Complainant is a Delaware corporation with its principal office located in Marlborough, Massachusetts. Founded in 1984, it is a research-based pharmaceutical company dedicated to the discovery, development and commercialisation of innovative medical products. One such product is a prescription sleep drug, licensed by the US Food and Drug Administration, which is sold under the trademark LUNESTA (the “mark”).
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has owned and used the trademark LUNESTA since 2005. It has over 30 trademark registrations and applications throughout the world for the mark LUNESTA for pharmaceutical preparations for the prevention and treatment of sleep disorders. These include US registered trade mark number 3133744 registered on August 22, 2006.
The Complainant also has extensive common law rights in the mark LUNESTA in the US and elsewhere by virtue of its widespread use and promotion of the mark since April 2005, including promotion via numerous domain names that include the term LUNESTA. The mark is famous in the US and throughout the world and has developed a very strong reputation among consumers as being associated with a well-respected brand of prescription sleep drug.
The Domain Name consists of the Complainant's mark LUNESTA together with the word “eszopiclone”, which is the generic name for, and active ingredient in, the Complainant's LUNESTA product. It has been held in numerous cases that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to that trademark. The addition of common terms to a trade mark does not avoid confusion as internet users are liable to assume that the domain name identifies a website operated by the trade mark owner for the sale of the product described.
The Respondent has no rights or legitimate interest in the Domain Name.
There is nothing in the Respondent's contact information that discloses any right or legitimate interest in the LUNESTA mark and the mere registration of the Domain Name gives rise to no such interest. There is no relationship between the Complainant and the Respondent and at no time has the Complainant licensed or permitted the Respondent to use the LUNESTA mark or register any domain name containing it.
The Respondent is clearly aware of the Complainant's mark, as it is using the Complainant's stylized logo on its website at “www.lunestaeszopiclone.com”. Indeed, that website is falsely presented as an official LUNESTA information website, using sophisticated photographs and graphics and having been designed to look like the Complainant's own LUNESTA site. The Respondent's site includes a link to what purports to be the official “Lunesta Medication Guide” that the Complainant supplies with the drug. In fact, all of the links on the Respondent's website resolve to an online pharmacy that sells multiple drugs including drugs that compete with the Complainant's product.
In the circumstances, the Respondent is using the Domain Name to attract customers by creating the false impression of a legitimate connection between the Respondent's website and the Complainant, and then to divert such customers to an online pharmacy selling competing and unrelated drugs.
The Domain Name was registered and is being used in bad faith.
In the circumstances described above, the Respondent is intentionally attempting to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website. Accordingly, the Respondent's registration of the Domain Name constitutes bad faith for the purposes of paragraph 4(b) of the UDRP Policy.
The Respondent had both constructive and actual knowledge of the Complainant's LUNESTA mark and had no rights or legitimate interests in the Domain Name. There is no obvious justification for its selection of the Domain Name other than bad faith.
The Respondent's use of the Complainant's logo as well as its mark for the purposes of its website described above is further evidence of bad faith and tarnishes the reputation of the Complainant. There can be no doubt that the Respondent registered the Domain Name in a blatant attempt to confuse consumers and improperly profit by trading off the Complainant's reputation and mark.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
The Panel finds that the Domain Name is confusingly similar to the Complainant's LUNESTA trade mark. Ignoring the formal suffix “.com”, the Domain Name consists of the Complainant's mark together with the term “eszopiclone”, which is the generic name for, and descriptive of, the active ingredient in the Complainant's product sold under that mark. The inclusion of that term does not sufficiently distinguish the Domain Name from the Complainant's mark to prevent the Domain Name from being confusingly similar to it.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Other than by its use of the Domain Name itself, there is no evidence that the Respondent has ever traded under the Domain Name, or a name similar to it, or that it has rights in any such name. The Panel accepts the Complainant's submission that it has never licensed or authorised the Respondent to use its mark LUNESTA.
The Panel accepts the Complainant's evidence concerning the Respondent's use of the Domain Name, which the Respondent has made no attempt to deny. In particular, the Panel finds that the Respondent has used the Domain Name to resolve to a website that is designed to look like an official website operated by the Complainant to promote and provide information about its LUNESTA product, while in fact linking to an online pharmacy site offering other and competing products.
The Panel finds in these circumstances that the Respondent is intentionally attempting to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website. Accordingly, the Domain Name was registered and is being used in bad faith for the purposes of paragraph 4(b)(iv) of the UDRP.
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 <lunestaeszopiclone.com> be transferred to the Complainant.
Steven A. Maier
Dated: March 10, 2010