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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sepracor Inc. v. Shonkin Inc.

Case No. D2008-1258

1. The Parties

The Complainant is Sepracor Inc. of the United States of America, represented by Latham & Watkins LLP, of the United States of America.

The Respondent is Shonkin Inc. of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <buylunesta.org> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008. On August 18, 2008, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the domain name at issue. On August 20, 2008, Dynadot, LLC 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2008.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on October 15, 2008. 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 holds multiple trademark registrations for the trademark LUNESTA for use in connection with pharmaceutical preparations for the prevention and treatment of sleep disorders. One such trademark was registered with the United States Patent and Trademark Office on December 19, 2006 and claims a date of first use of April 1, 2005.

Respondent registered the domain name <buylunesta.org> on June 29, 2005. Complainant attached web page printouts to its Complaint which show that Respondent’s domain name contains information regarding Complainant’s LUNESTA drug and leads to online pharmacies that offer drugs for sale without prescriptions.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has used the mark LUNESTA since at least April 1, 2005, that it has numerous trademark registrations and applications for LUNESTA around the world, that it has extensively used and advertised the LUNESTA prescription sleep drug, and that it has registered numerous Internet domain names containing the trademark LUNESTA. Complainant also asserts that it has never licensed or permitted Respondent to use Complainant’s LUNESTA trademark, that Respondent copied Complainant’s logo onto Respondent’s website, and that Respondent’s website contains links to other websites that sell competing pharmaceuticals. Complainant also asserts that Respondent is attempting to attract Internet users to Respondent’s website and that Respondent commercially gains from such activity via “pay-per-click” advertisements. Complainant further asserts that LUNESTA requires a prescription and is subject to monitoring and enforcement by the United States Drug Enforcement Administration, yet the sites linked by Respondent appear to sell substitutes without requiring consultation with a medical doctor.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to Rules paragraph 15, panelists in domain name disputes “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem[] applicable.”

Under Policy paragraph 4(a), Complainant must prove the following:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under Policy paragraph 4(a)(i), the Complainant must show that the domain name at issue is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

The numerous registration certificates attached to the Complaint demonstrates that Complainant has rights in the mark LUNESTA. The dominant part of Respondent’s domain name is “lunesta”, which of course is identical to Complainant’s trademark. The addition of the word “buy” at the beginning of Respondent’s domain name does not remove the confusing similarity between Respondent’s domain name and Complainant’s trademark. United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (October 5, 2007) (“�[n]umerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).’ See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No.. D2001-0087 (May 2, 2001).”). Further, the fact that Respondent registered its domain name in the “.org” TLD (and that “.org” thus appears at the end of the domain name) also does not remove the confusing similarity between Respondent’s domain name and Complainant’s trademark. United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (October 5, 2007) (“The addition of the .com top level domain also does nothing to dispel the confusing similarity between Respondent’s domain name and Complainant’s trademark.”).

These principles recently were applied by another panel to determine that the domain name <buy-lunesta.biz> was confusingly similar to complainant’s LUNESTA trademark. Sepracor Inc. v. graphicsmachine.com, WIPO Case No. D2007-0646 (June 28, 2007). This same reasoning applies in this case.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

The Complainant also must demonstrate that the Respondent has “no rights or legitimate interests in respect of the domain name”. Policy paragraph 4(a)(ii). “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark 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 trademark or service mark at issue.”

Policy, paragraph 4(c).

“Lunesta” does not appear to be an English word and Respondent’s combination of the word “buy” with Complainant’s trademark indicates that Respondent – Shonkin, Inc. – would not be commonly known as “buylunesta.org”. The use of the domain name <buylunesta.org> in connection with a website that offers pharmaceutical drugs for sale appears to be designed to trade on the goodwill associated with Complainant’s trademark. Such use is not bona fide or a fair use. In that regard, this dispute is indistinguishable from Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806 (February 19, 2008) in which the panel found that the respondent had no rights or legitimate interests in the domain name <onlinetamiflu.com> which was being used to direct consumers to online pharmacies. See also Sepracor Inc. v. graphicsmachine.com, WIPO Case No. D2007-0646 (June 28, 2007).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name, and that Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

The Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent 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 that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [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 [Respondent has] engaged in a pattern of such conduct; or

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

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Complainant asserts that this last factor is satisfied by virtue of Respondent’s use of a domain name that “consists almost entirely of Complainant’s famous LUNESTA trademark”, Respondent’s copying of Complainant’s logo, and Respondent’s use of “pay-per-click” advertisements. The Panel agrees. The unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009 (March 4, 2008); see also Hoffmann-LaRoche Inc. v. sasha rutova, WIPO Case No. D2008-0746 (July 8, 2008); Sepracor Inc. v. graphicsmachine.com, WIPO Case No. D2007-0646 (June 28, 2007).

The factors under paragraph 4(b) of the Policy are nonexclusive. Complainant has presented unrebutted evidence that Respondent is using the domain name to lead consumers to websites that appear to sell prescription drugs without requiring prescriptions. This type of activity presents a potentially serious public health risk and also is a bad faith use of the domain name. Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-0682 (July 2, 2008) (“The evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faith”).

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that Policy paragraph 4(a)(iii) is satisfied.

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 name <buylunesta.org> be transferred to the Complainant.

Bradley A. Slutsky
Sole Panelist

Dated: October 29, 2008