Complainant is Sunovion Pharmaceuticals Inc. of Marlborough, Massachusetts, United States of America, represented by the law firm Kirkland & Ellis, United States of America.
Respondent is ProCommerce, LLC of Orem, Utah, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 9, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On February 9, 2012, GoD, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 23, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 that makes and markets a sleep drug called “Lunesta”. Lunesta is a prescription drug approved by the United States Food and Drug Administration (FDA). Complainant holds more than thirty trademarks worldwide for LUNESTA, including four in the United States of America duly registered with the United States Patent and Trademark Office (USPTO). The earliest of these was filed in 2003, issuing as a mark on the primary register in 2006. Complainant claims use of the LUNESTA mark in commerce as early as April 2005. Complainant has actively promoted this mark and product, including on the Internet. The Complaint lists as examples fifteen domain names it owns of which “lunesta” is the dominant feature.
The disputed domain name was registered on August 25, 2010. A screen shot of the page at the disputed domain name dated January 12, 2012, (Complaint, Annex 11) indicates that at that date the disputed domain name was used to promote and sell “Luxenor”, described on that page as a “Non-Rx1 Sleeping Pill” and in the Complaint as a “non-prescription, non-FDA approved ‘sleeping pill.’” When the Panel attempted to access the disputed domain name there was only a blank page.
In September 2011, Complainant commenced civil litigation against “Health Science Nutrition Inc.” in the United States District Court for the District of Massachusetts, in which Complainant asserts claims of trademark infringement, unfair competition, and trademark dilution under United States federal law and Massachusetts state law. In the complaint in that action, Complainant alleges that the defendant Health Science Nutrition Inc. “owns and/or operates websites” at which Lunexor is sold, including the disputed domain name in this proceeding. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to Complainant’s registered LUNESTA mark. The first four letters are identical and the logo and product packaging for Luxenor is very similar to that which Complainant uses for LUNESTA, with a moth-like design at the upper right-hand corner of the product name. Differences in the final three letters, addition of the word “buy,” or addition of the generic top-level domain “.com” does not obviate confusion; an Internet user may mistakenly believe Respondent’s website is owned or sponsored by Complainant.
Complainant has never licensed Respondent to use its LUNESTA mark or sell its products. Respondent’s corporate name does not contain Luxenor or any derivative of it. LUNESTRA is a fanciful word, coined expressly for Complainant’s product, and “Respondent cannot argue that it has a legitimate interest in a name that is confusingly similar to Complainant’s LUNESTA mark,” and “there is no apparent reason why Respondent might legitimately wish to use it in the [disputed] domain name.” Respondent’s only use, to sell “the infringing product,” is not legitimate, and especially “concerning” given the prescription status of Complainant’s product.
Respondent clearly registered the disputed domain name with Complainant’s mark and product in mind. Respondent had constructive notice of Complainant’s “famous” mark, and the similarity between the words “lunesta” and “lunexor” cannot be accidental. Registration and use of the disputed domain name to sell an infringing product evidences and brings Respondent within the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Standard of Review
Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In this default case it should be noted that Respondent’s failure to respond to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint or result automatically in a transfer of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.6. B. Confusing Similarity
Under longstanding Policy precedent, “Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.” WIPO Overview 2.0, paragraph 1.2. As Complainant argues, the Panel looks to the dominant feature of the disputed domain name, ignoring the common word (“buy”) as the prefix and the generic top-level domain.
Here, visual similarity is not obvious, and the identity of the first four letters, standing alone, does not establish similarity. See Forest Laboratories, Inc. v. Clark Grace,WIPO Case No. D2011-1006.2 The Panel does believe that Complainant has demonstrated aural similarity, however, based upon the apparent phonetic pronunciations – “lu-NES-ta” and “lu-NEX-or”. For purposes of the Policy – and for reasons set out below the Panel expressly disclaims any opinion on whether the aural similarity has significance under United States trademark law – Complainant has shown, in the view of the Panel, that the disputed domain name is confusingly similar to a mark in which Complainant has rights. C. Rights or Legitimate Interests
Complainant has not authorized Respondent to use its trademark, and Respondent’s corporate name does not reflect any common usage of LUNESTA. But, as Complainant itself alleges, Respondent does sell a product named “Lunexor”, which is identical to the dominant feature of the disputed domain name. As this case does not involve a manufacturer-reseller dispute, that fact would ordinarily give Respondent a right or legitimate interest in the disputed domain name, see Policy, paragraph 4(c)(ii); Forest Laboratories, supra; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.
Complainant seeks to avoid this conclusion on one basis only: that Respondent’s choice (or Respondent’s principal’s choice, as alleged in the Massachusetts lawsuit) was done solely to sell a product that infringes Complainant’s mark under national (U.S. federal or Massachusetts state) law, i.e., that Respondent is selling an “infringing product.” While Complainant is seeking to enforce its rights in the LUNESTA mark in the Massachusetts lawsuit, it points to no judicial or administrative determination, in the United States or elsewhere, that includes a finding of infringement. At this point all the Panel has to rely upon are Complainant’s allegations in this proceeding and in the Massachusetts lawsuit.
Such unsupported allegations, no doubt made in good faith and upon a reasonable belief that the court and the Panel will sustain them upon the evidence, rarely suffice to overcome a showing that a seller has a legitimate interest in its product‘s name. One exception is clear cybersquatting – where there is no plausible explanation other than outright mimicry obviously intended to play off the fame of the complainant’s mark. The cases cited by Complainant3 are examples of this. In each such case cited by Complainant the respondent sold third party products that competed with those of the complainant. In none of those cases did the respondent sell its own product, competing or not, under the name incorporated into the disputed domain name. Here, Respondent, or its principal, is doing exactly that. And, Lunexor appears to be a genuine product; it is sold by several popular online retailers and is the subject of considerable commentary on the Internet. In contrast to the garden-variety typosquatting or cybersquatting cases cited by Complainant, Lunexor is not a product conjured up to make money solely from exploiting another’s mark through a website.
This case is analytically very close to the panel’s decision in the Forest Laboratories cases.4 There, as here, the complainant’s charges of lack of rights or legitimate interests turned upon a yet-unsupported allegation of infringement. In Forest Laboratories, the panel held the complainant had not proven its case under paragraph 4(a)(ii) of the Policy. Are there factual or legal differences that dictate a different result here?
In Forest Laboratories the respondent was the manufacturer of the allegedly infringing product; here that is unclear. That is a difference without a distinction, however, as Complainant here asserts that Respondent is controlled by the manufacturer.
One difference in Complainant’s favor is that Respondent’s Luxenor product competes directly with Complainant’s product that bears its mark. In Forest Laboratories the complainant acknowledged that the respondent’s product was used for a different purposes, basing its claim of confusion on the fact that both products were sold at pharmacies.
Another difference in Complainant’s favor is that, to this Panel’s ears and eyes, there is greater similarity between Complainant’s mark and that of Respondent’s competing product, which comprises the dominant feature of the disputed domain name, as opposed to the mark and disputed domain name at issue in Forest Laboratories. The respondent in Forest Laboratories advanced a reasonably convincing argument that it’s “Flexapro” product emphasized “flex” rather than parroted the complainant’s LEXAPRO mark. In this case, in contrast, the aural and visual similarity is far less likely to be coincidental, and at the least Respondent has not put forward any reason to counter the charge of imitation.
These latter two differences make this a closer case than Forest Laboratories, but cannot overcome the principal bases upon which the panel denied the complaints in those cases. For reasons that should be obvious to those familiar with the UDRP process, this proceeding is not the place – and certainly should not be the first place – for a declaration that a particular product infringes (or not) another party’s trademark. A UDRP proceeding is decided on a single pleading from each party, with no discovery or cross-examination, and is narrowly focused upon the three discrete Policy elements. An action for infringement (or contesting a trademark application in the USPTO, as was the case in Forest Laboratories) involves different legal standards and calls for a broader record, with factual and expert evidence on many topics of marginal (if that) relevance to the Policy standards. All of this evidence is subject to challenge and confrontation by the opposing party and the tribunal. Further, as many UDRP panels have noted, infringement alone does not automatically make out a claim for cybersquatting, and vice versa.
In the Panel’s view, the Massachusetts lawsuit is the place for determination in the first instance whether or not Respondent’s Lunexor product infringes Complainant’s registered LUNESTA mark. Even if there were no pending lawsuit, however, this Panel would require a more compelling showing to base his decision on a first-instance finding of infringement.
Complainant’s case under paragraph 4(a)(ii) of the Policy depends on a finding of infringement that the Panel declines to make. Thus the Panel finds that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel’s determination is based solely upon the prudential reasons discussed above and in Forest Laboratories. The Panel reiterates its disclaimer of any view on the merits of Complainant’s charge of infringement. This Panel intends its decision, which is neither res judicata nor collateral estoppel in any litigation between the parties, to assist neither party in the Massachusetts case or any other forum. D. Registered and Used in Bad Faith.
As the Policy’s requirements are conjunctive, the Panel needs not address this Policy head. 7. Decision
For the foregoing reasons, the Complaint is denied. In the event that Complainant obtains a judicial or administrative finding of trademark infringement or other such comparable finding in its favor concerning the use of the presently disputed domain name, the denial is without prejudice to Complainant’s re-filing its case under the Policy.
Richard G. Lyon
Sole Panelist
Dated: March 28, 2012
1 In the United States (U.S.) “Rx” is a common abbreviation for “prescription.”
2 Decided together with Forest Laboratories, Inc. v. Natural Products Solutions LLC,WIPO Case No. D2011-1032. For convenience the Panel will subsequently refer to these two cases as “Forest Laboratories.”
3 BHP Billiton Innovation v. BHP / PrivacyP,WIPO Case No. D2011-0465; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Campero International, Corp., Campero International Limited, Campero International, S.A., Campero USA Corp., Pollo Campero, S.A., Pollo Campero, S.A. de C.V., Pollo Campero de Honduras, S.A. de C.V. v. Jordan Data Communication Services Company,WIPO Case No. D2004-1105; Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049; Pfizer Inc., A Delaware Corporation v. Phizer's Antiques and Robert Phizer,WIPO Case No. D2002-0410.
4 The Forest Laboratories cases also involved a complainant that sold an FDA-approved drug.
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