WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sumitomo Dainippon Pharma Co., Ltd., Sunovion Pharmaceuticals Inc. v. Raid Benson
Case No. D2018-2893
1. The Parties
The Complainants are Sumitomo Dainippon Pharma Co., Ltd. Of Osaka, Japan and Sunovion Pharmaceuticals Inc. of Marlborough, Massachusetts, United States of America (“United States”), represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States.
The Respondent is Raid Benson of Nigeria.
2. The Domain Name and Registrar
The disputed domain name <eu-sunovion.com> (“the Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2019.
The Center appointed Geert Glas as the sole panelist in this matter on January 25, 2019. 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
Sumitomo Dainippon Pharma Co., Mtd and its subsidiary, Sunovion Pharmaceuticals Inc., collectively referred to as the Complainants, are companies active in the manufacturing and sales of pharmaceuticals.
The Complainants hold a large number of trademark registrations for SUNOVION on an international, European and national level (including in the United States). The United States trademark SUNOVION, registration No. 4096601, was filed on December 1, 2009 and registered on February 7, 2012, class 5 and the European Union trademark SUNOVION, registration No. 008966772, was filed on March 19, 2010 and registered on September 20, 2010, class 5. The Complainants moreover have registered several domain names incorporating the SUNOVION trademark, including the <sunovion.eu> domain name, which was registered on May 11, 2010.
The Registrar has confirmed to the Center on December 19, 2018 that the Domain Name has been registered by the Respondent since July 4, 2018.
It appears from the Complaint that the Respondent has set up a website connected to the Domain Name. Users attempting to use the Domain Name are however automatically redirected to the Complainants’ website, “www.sunovion.eu”.
Moreover, it appears that the Domain Name was used in order to create email addresses which include the SUNOVION trademark, this in order to defraud third parties by impersonating employees of the Complainants.
A Mr. Nair, a real estate agent based in India, was notably contacted in October 2018 by a Mrs. Saulh under the email address “[…].email@example.com”. Mrs. Saulh stated that Sunovion Pharmaceuticals Inc. was looking to acquire land, in order to set up base in India.
Mr. Nair was then informed by a Mr. Philip, under the email address “[…]@eu-sunovion.com”, that a board meeting of Sunovion had authorized Mrs. Saulh to travel to India to visit prospective properties.
Mrs. Saulh then provided Mr. Nair with a copy of her airline ticket and it was agreed that, upon her arrival in Bangalore on October 23, 2018, they would visit several potential sites.
On October 23, 2018, Mr. Nair was contacted by Mrs. Saulh who claimed that she had landed in New Delhi in the morning to complete some paper work at the United States Embassy. She was planning to arrive in Bangalore with another flight that same evening, but was confronted with the fact that her credit card was not working. She therefore asked Mr. Nair to send her money for payment of an excess luggage fee at the airport and for fees required by the United States Embassy.
Mr. Nair grew suspicious and verified the airline ticket provided by Mrs. Saulh. When it appeared that this ticket was forged, Mr. Nair informed the Complainants that persons were using email addresses to impersonate employees of Sunovion Pharmaceuticals Inc.
5. Parties’ Contentions
The Complainants request that the Domain Name be transferred to them on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainants contend that the Domain Name is confusingly similar to the SUNOVION trademark.
The Complainants contend in this respect that the Domain Name incorporates the SUNOVION trademark in its entirety and only differs from the trademark by the addition of the geographic indicator, “eu”.
The Complainants therefore believe that the Domain Name is likely, and has already started, to cause confusion, even more so due to the fact that the Complainants conduct business in Europe under the SUNOVION trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainants first contend that the Respondent has never been a representative of the Complainants or licensed to use the SUNOVION trademark.
The Complainants further contend that there is no indication that the Respondent is known under the Domain Name.
The Complainants finally contend that the Respondent is not making a legitimate use of the Domain Name. To the contrary, the Respondent is using the Domain Name to make an illegitimate use of the SUNOVION trademark to defraud third parties.
(iii) The Domain Name was registered and is being used in bad faith
According to the Complainants, the Respondent has intentionally registered and used the Domain Name in bad faith.
The Complainants contend that the Domain Name deliberately and misleadingly incorporates the SUNOVION trademark, and also misleadingly incorporates the Complainants’ domain names <sunovion.com> and <sunovion.eu>. According to the Complainants, this indicates that the Respondent must have been aware of the existence of the SUNOVION trademark and the related domain names upon registering the Domain Name.
The Complainants furthermore contend that the Respondent deliberately chose to redirect traffic from the Domain Name to the Complainants’ website, “www.sunovion.eu”, which shows the Respondent’s intent to take advantage of the well-recognized SUNOVION trademark’s goodwill and reputation, which the Respondent subsequently did by trying to defraud third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
These issues are discussed in turn as follows.
A. Consolidation of Complainants
Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure a complaint by two Complainants against the Respondent.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, it should be assessed whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0))
Applying these principles to the present case, the Panel first considers the fact that there has been no express request for consolidation in the Complaint. This may perhaps be explained by the fact that one of the complainants is a wholly owned subsidiary of the other Complainant, such that the drafter of the Complaint has treated both Complainants as one and the same entity. Indeed, members of the same group of companies, such as the Complainants, may constitute an “entity” for the purposes of initiating a UDRP proceeding. (see Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L’Oréal S.A. v. Cong Ty Co Phan Phununet, WIPO Case No. D2010-0603; L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; and Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).
In these circumstances, and bearing in mind its general powers as outlined above, the Panel does not consider that the failure to request consolidation per se should prevent the Panel so ordering, provided that the other criteria are met (see Expedia Inc. and Hotels.com L.P. v. Arabia Horizons Tours LLC, WIPO Case No. DAE2014-0005).
As far as the remaining criteria are concerned, it is clear from the terms of the Complaint that both the Complainants have a common grievance against the Respondent and that the Respondent’s conduct as regards the Complainants’ individual rights is common conduct affecting such rights in a similar fashion.
In view of these circumstances, the Panel considers that it is procedurally efficient to permit the consolidation and that this is fair and equitable to all of the Parties. Accordingly, the Panel orders that the Complainants may proceed against the Respondent by way of a single Complaint.
This decision has a further consequence regarding the remedy sought in the Complaint. The Complainants request only that the Domain Name be transferred “to Complainant” and do not specify to which of the Complainants the Domain Name should be transferred. The Panel therefore assumes that in the event of the Complainants’ success, the Complainants, as affiliates, may determine amongst themselves who will be the registrant of the Domain Name.
B. Identical or Confusingly Similar
The Complainants have demonstrated that they validly own numerous international, European and national SUNOVION trademarks and own domain names incorporating the SUNOVION trademark. This satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (see section 1.2 of the WIPO Overview 3.0).
The Complainants’ rights in the SUNOVION trademark predate the registration of the Domain Name by many years. Moreover, the Domain Name incorporates the Complainants’ SUNOVION trademark in its entirety and differs from the SUNOVION trademark only in that the geographical prefix “eu-” has been added.
The addition of this prefix does not prevent a finding of confusing similarity. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. (see section 1.8 of the WIPO Overview 3.0)
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
C. Rights or Legitimate Interests
Although the Complainants bear the general burden of proof with regard to establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. Accor v. Eren Atesmen, WIPO Case No. D2009-0701; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0445; Dow Jones & Company, Inc., (First Complainant) and Down Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704; and section 2.1 of the WIPO Overview 3.0).
The Complainants have established that the Respondent, who is not a licensee or an authorized agent of the Complainants, uses the Domain Name to defraud individuals, an illegitimate activity that is undoubtedly commercial and non bona fide in nature (see, e.g., Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017).
The fact that the Respondent has deliberately made it so that the users attempting to reach the website connected to the Domain Name are automatically redirected to the Complainants’ website, “www.sunovion.eu”, indicates that a conscious effort is made in order to create the misleading impression that the Domain Name belongs to the Complainants, or is related to the Complainants in some way. The Panel is of the opinion that those circumstances do indeed constitute a prima facie indication that the Respondent is using the Domain Name in a non bona fide nature.
Finally, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; and Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230). This is even more relevant in the case at hand. Indeed, by failing to submit a reply, the Respondent has opted not to address the serious allegation that the Respondent appears to be using the Domain Name to defraud individuals based on the SUNOVION trademark’s reputation.
In these circumstances the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and accordingly that the second element under paragraph 4(a) of the Policy has been established.
D. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of a domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s 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 the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the Respondent’s website or location.
Due to the confusing similarity between the Domain Name and the SUNOVION trademark, and the fact that the Respondent has set up the Domain Name to automatically redirect to the Complainants’ legitimate website “www.sunovion.eu”, it is reasonable to infer that the Domain Name was registered to mislead and confuse users into believing that the Domain Name is associated with the Complainants and their trademarks. Consequently, the Panel finds that the Respondent registered the Domain Name in bad faith.
Moreover, it appears that the Domain Name was used to create email addresses which were then used in an elaborate scheme to defraud third parties by impersonating employees of the Complainants. These circumstances are demonstrative that the Domain Name was used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established.
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 <eu-sunovion.com> be transferred to the Complainants.
Date: February 8, 2019