WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunovion Pharmaceuticals Inc. v. Lucio Peacock
Case No. D2018-0802
1. The Parties
Complainant is Sunovion Pharmaceuticals Inc. of Malborough, Massachusetts, United States of America (“US”), represented by Wilmer Cutler Pickering Hale and Dorr LLP, US.
Respondent is Lucio Peacock of San Diego, California, US.
2. The Domain Name and Registrar
The disputed domain name <buylunestarx.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 15, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 12, 2018. 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
Complainant, Sunovion Pharmaceuticals, Inc., is a pharmaceutical company that specializes in creating psychiatric, neurological and respiratory therapies. Complainant developed and markets a pharmaceutical preparation for the prevention and treatment of sleep disorders under the name and mark LUNESTA. The pharmaceutical LUNESTA is prescribed by medical personnel and is for short term use only. Complainant owns trademark registrations for its LUNESTA mark in connection with its pharmaceutical preparation, including in the United States for LUNESTA as a word mark (Registration Nos. 3133744 and 5350716), the earliest of which issued to registration in August 2006, and LUNESTA & Design (Registration Nos. 3187447 and 5350718), the earliest of which issued to registration in December 2006. Complainant also owns and uses the domain name <lunesta.com> (registered in 2003) to provide information to its customers and medical professionals about the LUNESTA pharmaceutical product.
Respondent is an individual based in San Diego, California. Respondent registered the disputed domain name on October 31, 2017. Complainant sent Respondent a demand letter via email on February 8, 2018 concerning the registration and use of the disputed domain name. Respondent does not appear to have responded to that demand letter. Currently the disputed domain name resolves to a website that displays information about the LUNESTA pharmaceutical and which promotes the online sale of the LUNESTA pharmaceutical without a prescription.
5. Parties’ Contentions
Complainant asserts that it adopted the LUNESTA mark in 2003 and that it has expended millions of dollars and extensive resources on the research, development and marketing of LUNESTA products. Complainant further asserts that LUNESTA products have been the subject of much media coverage and scrutiny and that as a result the LUNESTA mark is now famous throughout the world generally, and especially in the US.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s LUNESTA mark as the disputed domain name contains LUNESTA in its entirety. Complainant argues that the mere addition of the word “buy” only reinforces the (false) association between the LUNESTA mark and the disputed domain name. Moreover, the addition of the term “rx” at the tail of the disputed domain name likewise reinforces the confusion as it relates to the subject matter of Complainant’s products, namely pharmaceutical products.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent (a) is not licensed by or a representative of Complainant authorized to use the LUNESTA mark, (b) is not commonly known by the disputed domain name, (c) has knowingly and blatantly attempted to trade on the goodwill and fame of Complainant by registering and using the disputed domain name many years after Complainant had secured and developed rights in the LUNESTA mark, and (d) is not making a fair use of the disputed domain name, as Respondent has used the disputed domain name, which is based on Complainant’s LUNESTA mark, to make unauthorized sales of LUNESTA products for Respondent’s own profit.
Lastly, Complainant argues that Respondent has registered and used the disputed domain name in bad faith as Respondent has knowingly registered a confusingly similar disputed domain name, that consists of the LUNESTA mark, in order to divert Internet uses to Respondent’s website to sell Complainant’s LUNESTA products without a prescription and/or competing products of third parties. In that regard, Complainant contends that the website at the disputed domain name suggests an affiliation with or endorsement by Complainant, and that, as a result, consumers are likely to mistakenly believe that the products promoted and advertised on the website at the disputed domain name are provided by or sponsored by Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the LUNESTA mark in connection with pharmaceutical products. Complainant has also provided evidence that the LUNESTA mark has been registered in the US well before Respondent registered the disputed domain name.
With Complainant’s rights in the LUNESTA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s LUNESTA mark as it incorporates the LUNESTA mark in its entirety in the disputed domain name. The addition of the word “buy” at the head of the disputed domain name and the generic term “rx” at the tail of the disputed domain name does not distinguish the disputed domain name from Complainant’s LUNESTA mark, as the dominant component of the disputed domain name is LUNESTA. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s LUNESTA mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once complainant makes such a prima facie showing, the burden of production shifts to respondent, though the burden of proof always remains on complainant. If respondent fails to come forward with evidence showing rights or legitimate interests, complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name in connection with a website that promotes the online sale of LUNESTA without prescription. The website provides information about LUNESTA products and offers to sell LUNESTA through a “Lunesta Online Pharmacy.” The website also offers “Lunesta discounts” for consumers who buy LUNESTA online regularly and includes pictures of LUNESTA products and what appears to be a container of 2mg LUNESTA from “LifePlus – Online Pharmacy.” These features of the website in connection with the disputed domain name make it appear that Respondent’s website has some connection or authorization from Complainant for making online sales of LUNESTA without a prescription, as is normally required.
In addition, the website at the disputed domain name also suggests that it sells other pharmaceutical products by making offerings of discounts for high volume purchases of drugs online and by providing a link to an online seller of drugs at “www.topcanadiandrugs24rx.com”. Whether Respondent is itself making the online sales of LUNESTA or is involved in some marketing scheme, it appears more likely than not that Respondent is using the disputed domain name for profit to redirect web traffic that flows through the disputed domain name and associated website to an online drugstore (possibly the LifePlus Online Pharmacy or TopCanadianDrugs24rx.com) to make unauthorized sales of LUNESTA, as Complainant contends, and to sell to consumers other pharmaceutical products. Such actions, none of which are contested by Respondent who chose not to appear in this matter, do not constitute a bona fide use.
Given that Complainant has established with sufficient evidence that it owns rights in the LUNESTA mark, and given Respondent’s above noted actions and failure to appear, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
In the present case, Respondent was clearly aware of Complainant when Respondent registered the disputed domain name, given that the disputed domain name fully incorporates the LUNESTA mark, and given that the website at the disputed domain name promotes the unauthorized sale of LUNESTA products without prescription, purports to provide information about Complainant’s LUNESTA products, and suggests a connection or affiliation with Complainant. Given this awareness, Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith. Respondent has only used the disputed domain name to redirect Internet users to a website that offers the online sale of LUNESTA products without a prescription, and which promotes an online pharmacy through which LUNESTA and presumably other drugs can be bought. Respondent has also continued its activities, despite receiving a demand letter from Complainant regarding such use of the disputed domain name, and has never responded to Complainant’s letter. Similarly, Respondent has chosen not to appear in this proceeding to defend its actions. Simply put, the evidence before the Panel, none of which is contested by Respondent, makes its more likely than not that Respondent registered the disputed domain name to profit in bad faith from its likely association with Complainant and the Internet traffic that would flow through the disputed domain name, and not for some fair use or legitimate purpose.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buylunestarx.com> be transferred to Complainant.
Date: June 25, 2018