WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sepracor Inc. v. Merlin Mitchell Case No. D2009-0355 1. The Parties
Complainant is Sepracor Inc., Marlborough, Massachusetts, United States of America, represented by Latham & Watkins LLP, United States of America.
Respondent is Merlin Mitchell, Tallahassee, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2009. On March 18, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names.
On March 19, 2009, GoD, 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2009.
The Center appointed Carol Anne Been as the sole panelist in this matter on April 17, 2009. 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, Sepracor, a pharmaceutical company, owns a number of United States and international trademark registrations for the SEPRACOR mark (hereinafter, the “Mark”), and indicates first use of the mark since as early as 1989. In addition to its registered trademarks, Complainant operates a website using the domain name .
Respondent registered the domain names, and (hereinafter, the “Domain Names”) on July 31, 2007. The Domain Names lead to a portal website that provides links to pharmacy-related websites, some of which compete with Complainant. 5. Parties' Contentions A. Complainant i. Domain Name Identical or Confusingly Similar to Complainant's Mark
Complainant contends that the Domain Names are confusingly similar to the Mark because the only difference between the Domain Names and the Mark is addition of the word “cares”. Complainant argues that the Domain Names and the Mark are identical in all material respects, thereby presenting an obvious likelihood of confusion between the Domain Names and the Mark. ii. Respondent's Rights or Legitimate Interests in the Domain Name
Complainant contends that Respondent has not demonstrated any rights or legitimate interests in the Domain Names. Complainant asserts that Respondent registered the Domain Names without the authorization, knowledge or consent of Complainant. Complainant further contends that Respondent's websites provide no evidence of legitimate interest in the Domain Names as they merely consist of parking pages with pay-per-click links to Complainant's competitors. iii. Domain Name Registered and Used in Bad Faith
Complainant contends that Respondent has registered and is using the Domain Names in bad faith by intentionally attempting to attract Internet users to Respondent's websites, for commercial gain, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, and endorsement of the websites and products and services offered therein. Complainant contends that Respondent is using the Domain Names to create confusion among consumers who are looking for Complainant's products and that Respondent is profiting from revenue paid by sponsors of the links on the site. B. Respondent
Respondent did not respond to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it holds rights in the Mark and uses the Mark in connection with pharmaceutical preparations. The Mark is highly distinctive, being a fanciful word invented by Complainant. When a domain name incorporates a distinctive trademark in its entirety, the domain name may be confusingly similar to the distinctive mark, notwithstanding the addition of additional words. See, e.g., Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138 (finding confusingly similar to QUIXTAR).
Furthermore, the addition of the common word “cares” in the Domain Names does nothing to lessen the likelihood of confusion. When a domain name consists of a common term added to a distinctive mark, the overall impression is that the domain name is connected to the owner of the distinctive mark. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696.
Accordingly, the Administrative Panel finds that the Domain Names are confusingly similar to Complainant's trademarks. B. Rights or Legitimate Interests
Respondent has not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy to demonstrate rights to and any legitimate interest in the Domain Names. Complainant's assertion that Respondent has no rights or legitimate interests in the Domain Names is unopposed. The Panel may infer from the lack of response that Respondent does not have any legitimate interest in the Domain Names, see, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
Accordingly, based on the record and the Panel's finding below, the Administrative Panel finds that Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that evidence of bad faith arises when the respondent, by using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark. Respondent registered and is using the Domain Names in a manner that is likely to divert consumers looking for Complainant and directs such consumers to websites at least some of which are unrelated to or actually compete with Complainant. It is likely that Respondent benefits from click-through revenue when consumers click on links of Complainant's competitors. See e.g., Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102 (presuming that respondent has entered into commercial agreements to benefit financially from clicking on links of its website).
Accordingly, the Administrative Panel finds that Respondent registered and used the Domain Names in bad faith. 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, and be transferred to the Complainant.
Carol Anne Been
Sole Panelist
Dated: April 30, 2009
Full & Egal Universal Law Academy