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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sepracor Inc. v. One Star Global

Case No. D2007-0582

 

1. The Parties

Complainant is Sepracor Inc., Marlborough, Massachusetts, United States of America, represented by Latham & Watkins, Costa Mesa, California, United States of America.

Respondent is One Star Global, Midland, Texas, United States of America.

2. The Domain Names and Registrar

The disputed domain names <lunestarx.com>, <lunestasleepingpills.com> and <prescriptionlunesta.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 18, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. The next day, Wild West Domains, Inc., 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”), 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 May 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2007.

The Center appointed Steven L. Snyder as the sole panelist in this matter on June 14, 2007. 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

As represented in its trademark applications to the United States Patent & Trademark Office (“USPTO”), Complainant Sepracor Inc. started using the LUNESTA mark on April 1, 2005, in connection with “pharmaceutical preparations for the prevention and treatment of sleep disorders.” See USPTO reg. nos. 3187447 & 3133744. Since then, the LUNESTA mark has become widely known. A search conducted today on the web for LUNESTA will produce more than one million hits.

Less than one month after the mark’s introduction, Respondent registered the domain names <lunestasleepingpills.com> and <lunestarx.com>. A couple of weeks later Respondent registered the domain name <prescriptionlunesta.com>.

Each of Respondent’s domain names lead to active websites. The website linked to <lunestasleepingpills.com> features the headline “Lunesta Sleeping Pills.” The site for <lunestarx.com> takes a viewer to a website entitled “Lunesta Rx.” And <prescriptionlunesta.com> resolves to the “Prescription Lunesta.com” site.

Except for their names, the three websites are almost identical. Each site features a large advertisement for the Lunesta-brand sleeping pills (an advertisement that appears to be taken from Complainant’s own materials). Below the advertisement is copy that proclaims the website to be “an online resource to obtain medical services and treatment safely and efficiently.”

The website further represents that consumers may obtain prescription drugs without a “prior prescription.” A consumer need only provide credit card information, a delivery address, and “answer an Online Medical Questionnaire.” This questionnaire is purportedly designed to provide the company’s “physicians with information relevant” to the consumer’s “medical condition.” The physicians supposedly review the information “and either approve or deny” the request. If approved, “the physician will write the prescription and send it to a pharmacy where it will be filled and shipped” to the consumer via an express service.

Each website is a pharmacopoeia, offering numerous drugs for a wide variety of aliments. Some of the drugs offered are direct competitors to Complainant’s sleeping pills (e.g. Sonata, Ambien and Lunesta,Cialis, Viagra, Levitra), and if the drugs do not help, and the person just wants to talk about the ailment, each website also offers a variety of cellular phone products.

 

5. Parties’ Contentions

A. Complainant

LUNESTA, Complainant argues, is a mark in which it has rights and the domain names <lunestasleepingpills.com>, <lunestarx.com>, and <prescriptionlunesta.com> are identical or confusingly similar to that mark. Complainant attempts to establish its rights in the LUNESTA mark by pointing to two registrations issued by the USPTO, to several pending trademark applications, to common law rights acquired through the mark’s usage in commerce, and to numerous domain name registrations that incorporate the mark. As for the disputed domain names, Complainant argues they are identical to its mark “in all material respects.”

Respondent, Complainant maintains, does not have any rights or legitimate interests in respect of the disputed domain names. It points to three bits of evidence. First, Complainant avers that it has never licensed or permitted Respondent to use the LUNESTA mark. Second, it claims that Respondent picked domain names that were “almost an exact duplicate of a famous and distinctive trademark.” Third, Complainant contends that the disputed domain names are used to trade off the LUNESTA mark by “misleadingly diverting confused consumers to vendors offering competing products.”

Lastly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith. Much of the evidence previously cited is used to support this argument. In addition, Complainant suggests that Respondent’s incorporation of the LUNESTA mark into the disputed domain name may pose “serious public health risks.” Complainant suggests that consumers may obtain the prescription Lunesta-brand sleeping pills via the Respondent’s websites “without the proper consultation and advice of a medical doctor, resulting in the potential misuse and abuse of Complainant’s product.” Complainant also states that the sleeping pills obtained via the websites may also be “counterfeit versions” of Lunesta-brand sleeping pills.

For these reasons, Complainant requests that the registrations for the domain names <lunestasleepingpills.com>, <lunestarx.com>, and <prescriptionlunesta.com> be transferred to its possession.

B. Respondent

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

 

6. Discussion and Findings

In order to obtain the requested remedy, Complainant must prove the following three elements of the Policy: First, that the disputed domain names are each “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy § 4(a)(i). Second, that Respondent has “no rights or legitimate interests in respect of” the disputed domain names. Id. § 4(a)(ii). Third, that the disputed domain names were registered and are being used in “bad faith.” Id. § 4(a)(iii); see also Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001 (recognizing complainant’s burden to prove these three elements).

A. Identical or Confusingly Similar

Though a federal trademark registration is not required to prove a complainant’s rights in a mark, it certainly does not hurt to have one. In this case, Complainant has two federal registrations for the LUNESTA mark, numerous active websites that advertise the mark in connection with sleeping pills, and numerous LUNESTA television commercials that feature the mark. The Complainant obviously has rights in the mark.

It is just as obvious that the disputed domain names are confusingly similar to the LUNESTA mark. The only difference between the domain names and the mark are generic words (“sleeping pills”), a descriptive term (“prescription”) and a symbol for the same descriptive term (“Rx”). Since these generic and descriptive terms are frequently used in connection with the mark, they do not eliminate any confusion between the mark and the disputed domain name – they only add to the confusion. See F. Hoffmann-La Roche AG v. AndrewZZZ, WIPO Case No. D2006-0357 (“Further the addition of the generic terms “pianeta,” “super” and “mondo” does not make the domain names dissimilar to the trademark in which the Complainant has rights.”); RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540 (“The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.”).

Complainant has established the first element under the Policy. See Policy § 4(a)(i).

B. Rights or Legitimate Interests

There is no evidence in the record that Respondent has any rights or legitimate interests in the disputed domain names. And there is much to suggest it does not have any rights. Complainant avers, without contradiction, that it has no relationship with Respondent and that it has never licensed or permitted Respondent to use the “Lunesta” mark.

In addition, the word “lunesta” appears to be a word Complainant invented to market its prescription sleeping pills. Respondent did not accidentally register these domain names incorporating the LUNESTA mark and the descriptive and generic terms that are most often used with this mark. Nor did Respondent accidentally link the disputed domain names to websites that sell LUNESTA -brand pills, hundreds of other drugs and cell phones.

Instead, in the Panel’s view, Respondent’s actions were deliberate attempts to trade off of Complainant’s mark and to divert consumers for commercial gain. These actions do not establish rights or legitimate interests in the disputed domain names. Cf. Policy § 4(c) (listing means of proving rights and interests). They establish the contrary. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding no rights or legitimate interests where respondent used complainant’s invented word in domain names).

Complainant has established the second element under the Policy. See Policy § 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy lists several examples of the bad faith use and registration of a domain name. See Policy § 4(b)(i)-(iv). One example, to paraphrase the Policy, is the use of a confusing domain name in order to attract Internet users to a commercial website. Id. That is precisely what Respondent has done: It has taken the LUNESTA mark, incorporated the mark into three domain names that are designed to attract sleepless consumers, and then linked those domain names to websites that are awash with drugs and cell phones.

The Panel finds that Respondent clearly means to commercially profit from the confusing use of Complainant’s mark in the disputed domain names. This is evidence of Respondent’s bad faith registration and use of the disputed domain names. See Fannie May Confections, Inc. v. Hong Kong Names LLC, WIPO Case No. D2006-0814 (“The Respondent’s intention can be inferred from the circumstances of this case.”).

Complainant has established the third and final element under the Policy. See Policy § 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <lunestarx.com>, <lunestasleepingpills.com> and <prescriptionlunesta.com> be transferred to the Complainant.

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Steven L. Snyder
Sole Panelist

Dated: June 22, 2007