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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sunovion Pharmaceuticals Inc. (f/k/a Sepracor Inc.) v. Private Whois genericlunesta.org

Case No. D2011-1473

1. The Parties

The Complainant is Sunovion Pharmaceuticals Inc. (f/k/a Sepracor Inc.) of Massachusetts, United States of America, represented by Latham & Watkins LLP, United States of America (the “United States”).

The Respondent is Private Whois genericlunesta.org of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <genericlunesta.org> (“Disputed Domain Name”) is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2011, regarding seven (7) disputed domain names. On September 1, 2011, the Center transmitted by e-mail to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On the same day Internet.bs Corp. informed by e-mail the Center that the registrant of the domain names in the above-referenced case appeared to be willing to immediately transfer the disputed domain names to the Complainant at no charge. On September 7, 2011, the Center notified the suspension of the proceedings to allow an amicable settlement of the proceedings.

On September 22, 2011, the Complainant informed the Center that it had obtained the transfer of six (6) disputed domain names. In the same e-mail communication, the Complainant asked for a re-institution of the proceedings with reference to the disputed domain name <genericlunesta.org>.

On September 26, 2011, the Center transmitted by e-mail to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name <genericlunesta.org>. On September 27, 2011 Internet.bs Corp. transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Complainant filed an amended Complaint by e-mail to the Center on October 5, 2011.

The Center verified that the Complaint together with the amended 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 October 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2011.

The Center appointed Alistair Payne as the sole panelist in this matter on November 10, 2011. 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

The Complainant is a pharmaceutical company based in the United States of America specializing in drugs concerned with disorders of the central nervous system and respiratory ailments. It distributes a sleep drug under the LUNESTA trade mark which it has registered as a trade mark in numerous jurisdictions worldwide as early as 2006 and includes registered trade mark number 3133744 in the United States of America. The Complainant also owns 16 domain names which incorporate its LUNESTA mark.

The Disputed Domain Name was registered in June, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant says that it owns registered trade mark rights in its LUNESTA mark as noted above and that it has used the mark extensively in trade since April 1, 2005 to the point that the mark is well-known both in the United States and elsewhere. The Complainant submits that the Disputed Domain Name is confusingly similar to its LUNESTA trade mark because the addition of the word “generic” does not distinguish the Disputed Domain Name and is a common term. The Complainant notes that previous panels have found that the addition of the word “generic” to a domain name which wholly incorporates a pharmaceutical mark does not distinguish the domain name. As a result the Complainant says that the Disputed Domain Name is confusingly similar to its LUNESTA mark.

The Complainant submits that it has never authorized the Respondent to use its LUNESTA mark, that this mark is fanciful and distinctive and that there is no reason why the Respondent should legitimately wish to register the Disputed Domain Name or to use the Complainant’s mark. Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

As far as bad faith is concerned, the Complainant says that the registration of the Disputed Domain Name in June 2011 was made in bad faith on the basis that as a coined or fanciful mark the Respondent cannot have chosen it co-incidentally and based on the degree of use and repute attaching to the LUNESTA mark by that time the Respondent must have known of the Complainant’s mark and product or should be found to have constructive notice based on the Complainant’s many trade mark registrations for its mark. The Complainant says that this inference is only strengthened by the Respondent’s choice to use the common word “generic” in combination with the LUNESTA mark which is indicative of the Complainant’s intention to trade off the goodwill attaching to the Complainant’s mark or to use the Disputed Domain Name to divert Internet users for its own purposes.

The Complainant further submits that the fact that the website to which the Disputed Domain Name resolves features the Complainant’s stylized mark and logo and secondly that this website then links to a website at <generictab.com> which according to the Complainant is an unauthorized online pharmacy site that offers competing drugs for sale, is evidence of the Respondent’s bad faith. The Complainant submits that this constitutes evidence of the Respondent using the Disputed Domain Name to confuse and misleadingly divert Internet users in bad faith in terms of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has demonstrated that it owns registered trade mark rights in its LUNESTA mark and in particular owns United States trade mark registration 3133744. The word “generic” is a common English term which does nothing to distinguish the Disputed Domain Name from the Complainant’s LUNESTA mark. Previous panels have found that the word “generic” does not dispel confusing similarity (see for example Sanofi Aventis v. Kieco, Inc., WIPO Case No. D2010-1980) and similarly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LUNESTA mark.

As a result the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent’s use of its LUNESTA mark in the Disputed Domain Name, nor does it have any relationship to the Respondent. There is no evidence before the Panel to suggest that the Respondent has a right or legitimate interest in the Disputed Domain Name or uses it for a bona fide purpose. As set out below it appears to the Panel that the Respondent has chosen and is using it purposefully in order to confuse and divert Internet users for its own commercial purposes in bad faith.

Accordingly the Panel finds that the Complaint succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant’s LUNESTA mark is a coined or fanciful mark and that by mid 2011 the mark had been used in numerous countries, including in the United States and as a consequence had developed a reasonable degree of renown. In these circumstances the Panel infers that the Respondent did not register the Disputed Domain by chance, but rather chose it purposefully and in bad faith in order to take advantage of the goodwill and reputation attaching to the Complainant’s LUNESTA mark.

The Complainant is using the Disputed Domain Name to resolve to a website featuring the Complainant’s logo, a range of descriptive information about the features of the LUNESTA product and a link to an online pharmacy site offering competing drugs for sale. To all intents and purposes Internet users would think or could easily be confused into thinking that this site concerns the Complainant’s LUNESTA product. In the Panel’s view the Respondent’s use of the Disputed Domain Name to resolve to this site is indicative of its intention to confuse Internet users as to the source, sponsorship or affiliation of the website to which they are diverted for commercial gain in terms of paragraph 4(b)(iv) of the Policy. The Respondent’s use therefore constitutes use in bad faith.

As a result the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <genericlunesta.org> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Dated: November 17, 2011

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