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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sunovion Pharmaceuticals Inc. v. go1llc, Group One

Case No. DCO2011-0017

1. The Parties

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

Respondent is go1llc, Group One of Brooklyn, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lunesta.co> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2011, 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”) which have been adopted by the registration authority of .CO.

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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2011.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 15, 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

Complainant is a pharmaceutical company specializing in treatments that help people challenged by disorders of the central nervous system and respiratory ailments. Complainant sells a product under the trademark LUNESTA, which is a prescription sleep drug approved by the United States Food and Drug Administration (“FDA”) and is classified as a schedule IV controlled substance.

Complainant owns numerous registrations around the world for the trademark LUNESTA for use in connection with pharmaceutical preparations for the prevention and treatment of sleep disorders. In the United States, Complainant owns the following federal trademark registrations:

- Registration No. 3133744, registered August 2006

- Registration No. 3745483, registered February 2010

- Registration No. 3839400, registered August 2010

- Registration No. 3187447, registered December 2006

Complainant has also registered numerous domain names incorporating its LUNESTA trademark, including <lunesta.com>, <lunesta.org>, <lunesta.net>, <lunesta.info> and many others.

The disputed domain name was registered on July 29, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates Complainant’s mark in its entirety. The addition of the country code top level domain (ccTLD) “.co.” adds no distinguishing feature, and does not affect the determination of identity or confusing similarity.

The Panel finds that the disputed domain name is identical to Complainant’s LUNESTA trademark.

B. Rights or Legitimate Interests

Respondent submitted no information in response to the Complaint. The record is devoid of any evidence that Respondent may have any right or legitimate interest in the disputed domain name.

Complainant has never licensed or otherwise permitted Respondent to use Complainant’s LUNESTA trademark, or to register the disputed domain name. There is no prior or existing relationship between Complainant and Respondent.

Respondent’s website also provides no evidence of legitimate interests in the disputed domain name, as it consists of a parking page with pay-per-click links to sleep aids and related products and services that compete with Complainant’s products and services. Such use is not a bona fide use that would support a finding of rights or legitimate interests in the disputed domain name.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Respondent is based in the United States (U.S.) and therefore had at least constructive knowledge of Complainant’s U.S. trademark registrations for the LUNESTA mark which were all registered prior to Respondent’s registration of the disputed domain name. The record also indicates that Respondent had actual knowledge of Complainant’s LUNESTA trademark as it included that mark, as well as Complainant’s company name, in its website located at the disputed domain name. There can be no justification for Respondent’s selection of Complainant’s trademark for the disputed domain name, other than a bad faith intent to use the domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s LUNESTA trademark. Respondent is financially benefitting by this confusion via revenue paid by the sponsors of the links on the website located at the disputed domain name. This use of the disputed domain name to cause confusion to obtain profits via pay-per-click links constitutes strong evidence of bad faith.

The Panel finds that Respondent has registered and is using 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 <lunesta.co> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Dated: April 29, 2011

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