WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sunovion Pharmaceuticals Inc. v. Melissa Peters

Case No. D2012-0452

1.The Parties

The Complainant is Sunovion Pharmaceuticals Inc., Marlborough, Massachusetts, United States of America, represented by Latham & Watkins LLP, United States of America.

The Respondent is Melissa Peters, Winnipeg, Manitoba, Canada.

2. The Domain Name and Registrar

The disputed domain name <eszopiclonelunesta.com> is registered with Center of Ukrainian Internet Names (UKRNAMES).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 7, 2012, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On March 13, 2012, Center of Ukrainian Internet Names (UKRNAMES) 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”).

On March 14, 2012 the Center notified the Parties that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by UKRNAMES), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On March 16, 2012 the Complainant provided a request for English to be the language of the proceedings providing the reasons for such request. The Respondent did not provide any comments in this regard.

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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on April 26, 2012. 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, Sunovion Pharmaceuticals Inc., formally known as Sepracor Inc., is the owner of the LUNESTA trademark since at least as early as April 1, 2005. The Complainant is a leading pharmaceutical company dedicated to discovering, developing and bringing to market therapeutic products that advance the science of medicine. The Complainant specializes in treatments that help people challenged by disorders of the central nervous system and respiratory ailments. The Complainant’s product sold under the LUNESTA trademark is a prescription drug approved by the United States Food and Drug Administration and is classified as a schedule IV controlled substance.

The Complainant has achieved through extensive use and advertising of the drug sold under the LUNESTA trademark a strong reputation among consumers as being associated with a well-respected brand of prescription sleep drug.

The LUNESTA trademark is recognized and protected in many countries throughout the world.

The Complainant has also registered numerous domain names dedicated to promoting its pharmaceutical products and related business incorporating the LUNESTA trademark.

The disputed domain name <eszopiclonelunesta.com> was registered on January 3, 2012.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain name consists of the Complainant’s LUNESTA trademark and a word “eszopiclone”, which is a generic name for the active ingredient in the drug sold under the LUNESTA trademark. The only difference between the LUNESTA trademark and the disputed domain name is the addition of the generic drug name and the gTLD “.com”.

- Previous UDRP panel ruling concerning the disputed domain name <lunestaeszopiclone.com> in N/A Sepracor Inc. v. N/A Nadegda Vandar, WIPO Case No. D2010-0081 held that adding the generic term “eszopiclone” “does not sufficiently distinguish the Domain Name from the Complainant’s mark LUNESTA.

- Numerous UDRP panel decisions have held that “the mere addition of non-distinctive [generic] terms to a complainant’s trademark constitutes confusing similarity” and “does nothing to reduce the confusing similarity of the disputed domain name with the complainants well-known trademark.” Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.

- Adding ingredient terms to a prescription drug trademark “contributes to possible confusion over the source of information concerning the Complainant’s products.” Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- Mere registration of the disputed domain name establishes no rights or interests in it, and the Complainant never authorized Respondent’s use of the LUNESTA trademark nor engaged in any relationship with the Respondent.

- The Complainant never licensed or otherwise permitted the Respondent to use the Complainant’s LUNESTA trademark, or to register any domain name including the LUNESTA trademark. There is no relationship between the parties and the Respondent registered the disputed domain name without the authorization, knowledge, or consent of the Complainant.

- LUNESTA is a fanciful mark created by the Complainant that has no other meaning so the Respondent is unable to argue for existence of any legitimate interest in the disputed domain name.

- The link on the Respondent’s website associated with the disputed domain name resolves consumers to an online pharmacy that sells multiple drugs, including sleep drugs that compete with the Complainant’s drug sold under the LUNESTA trademark. The Respondent does not directly offer goods or services through the website to which the disputed domain name resolves.

(c) The disputed domain name was registered and is being used in bad faith:

- The Respondent’s registration and use of the disputed domain name is a bad faith attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LUNESTA trademark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and products and services offered.

- The Respondent’s website contains a link that takes consumers to a potentially unauthorized and/or potentially unlicensed online pharmacy that offers prescription drugs, including competing sleep drugs, at discounted prices. Therefore the Respondent is using the disputed domain name to create confusion among consumers who are looking for the Complainant’s pharmaceutical product and then reaping commercial gain from this confusion by selling discounted and competing drugs.

- The Respondent’s registration of the disputed domain name on January 3, 2012 was in bad faith because the Respondent had actual and constructive knowledge of the Complainant’s LUNESTA trademark.

- The Respondent has no obvious possible justification for the selection of the disputed domain name other than a bad faith desire to profit off of the Complainant’s mark because the disputed domain name incorporates wholesale the Complainant’s LUNESTA trademark, which consists of a fanciful trademark that is not a real word.

- The Respondent’s use of the Complaint’s LUNESTA trademark on the website associated with the disputed domain name constitutes a prima facie case of bad faith registration. The Respondent’s use on its website of a trademark or logo identical to the Complainant’s trademark or logo is prima facie bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreement associated with the disputed domain name is Russian. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded to the Complaint or on the issue of the language of the proceedings.

The Complainant requested for English to be the language of the administrative proceedings. In support of this the Complainant lists the following arguments:

- the disputed domain name consists entirely of English words, including generic terms and a trademark created by an English-speaking company from the United States;

- the website associated with the disputed domain name contains multiple and lengthy pages that are entirely in English;

- the website associated with the disputed domain name also links to an online pharmacy, which is entirely in English; and

- the Respondent resides in Winnipeg, where, according to census data provided, 99% of residents can speak English.

The Panel notes the request for English to be the language of the administrative proceedings in the Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint although duly notified in both languages.

The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present its position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response, that the Complaint was originally submitted in English and that there is evidence that the website associated with the disputed domain name is in English the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner.

B. Identical or Confusingly Similar

The Complainant has registered the LUNESTA trademark in a number of jurisdictions. The Complainant submits that the disputed domain name is confusingly similar to their trademark as the disputed domain name incorporates the LUNESTA trademark in its entirety. As the word “lunesta” has no meaning in the English language, the Panel finds the Complainant’s LUNESTA trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of the generic and descriptive English drug name “eszopiclone” the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “eszopiclone” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of the term “eszopiclone” in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to a website that is offering information on LUNESTA which in turn leads to other websites offering the ability to purchase drugs, including LUNESTA amongst others.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). In fact the addition of such a word as “eszopiclone” to the trademark only serves to strengthen the assumption in the mind of Internet users that the disputed domain name is associated or endorsed by the Complainant.

In any event the Panel finds that due to incorporation of a merely generic and descriptive word “eszopiclone” the disputed domain name to be confusingly similar to the Complainant’s trademark LUNESTA.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights and legitimate interests in the disputed domain name.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain name linked to a website containing information on LUNESTA and further led to other websites that are in the business of offering for sale various medicines, including those that are sold under the LUNESTA trademark. It is unclear to the Panel whether the Complainant duly authorized these products for sale in such fashion or whether they are counterfeit and/or imitations of the Complainant’s product sold under the LUNESTA trademark, however this is beyond the scope of deliberations of the Panel.

The current use of the dispute domain name, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there appears to be no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on January 3, 2012. The Complainant asserts that the product under the LUNESTA trademark has been registered and in use since 2005 and that the product is widely known by the LUNESTA trademark, which is recognized across the world and is registered in various jurisdictions.

Therefore as the disputed domain name has been registered more than 6 years after the registration of the Complainant’s LUNESTA trademark, it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain name (by linking another website that offers medicines for sale). The Respondent is using the disputed domain name to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name is used in connection with selling of medicines via a website, including those that are direct competitors to the product of the Complainant associated with the LUNESTA trademark, LUNESTA products, as well as the other medical products. The Complainant further contends that the disputed domain name was registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as associated websites with the trademark of the Complainant.

The Panel finds that the Respondent’s use of the disputed domain name has created a risk of confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and websites associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith.

The Complainant has provided evidence of the use of the disputed domain name to advertise links to websites promoting and/or offering products and services of third parties. According to L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”. This clearly indicates that the Respondent was using the disputed domain name in bad faith.

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.

The Panel finds the Complainant has shown that the Respondent 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, <eszopiclonelunesta.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Dated: May 11, 2012