WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sumitomo Dainippon Pharma Co., Ltd. v. Jone James

Case No. D2020-3319

1. The Parties

The Complainant is Sumitomo Dainippon Pharma Co., Ltd., Japan, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America (“United States”).

The Respondent is Jone James, India.

2. The Domain Name and Registrar

The disputed domain name <sunovion-eu.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 8, 2020, the Center transmitted registrant and contact information for the disputed by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 2020

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 26, 2021. 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

The Complainant, Sumitomo Dainippon Pharma Co., a Japanese pharmaceutical company is the parent company of Sunovion Pharmaceuticals Inc., its United States subsidiary. Together they create innovative psychiatric, neurological, and respiratory therapies.

They contribute clinical advances and new treatment options in the field of healthcare and have led advocacy and educational initiatives with cross-sector coalitions focused on the advancement of research, innovation, and improvements in the field. They aim to provide innovative and effective pharmaceutical solutions to people around the world.

In November 2009, the Complainant and its subsidiary adopted the trade mark SUNOVION for use in connection with pharmaceutical research and development activities for pharmaceutical preparations.

The Complainant owns United States trade mark registration no. 4096601 dated February 7, 2012, for SUNOVION covering;

“pharmaceutical preparations, namely, anti-inflammatories; pharmaceutical preparations for the prevention and treatment of disorders and diseases of the central nervous, peripheral nervous and respiratory systems; harmaceutical preparations for the prevention and treatment of sleep disorders”.

Upon establishing a subsidiary in the United Kingdom, Sunovion Pharmaceuticals Europe Ltd., in May 1997, for manufacturing and sale of pharmaceuticals in Europe, the Complainant registered European Union trade mark registration no. 8966772, registered on September 20, 2010 for SUNOVION.

Copies of both the United States and European Union registrations are exhibited at Annex 4. The mark SUNOVION is used extensively in association in conjunction with the Complainant’s goods and services.

In September 2009, the United States subsidiary registered the domain name <sunovion.com> for use in connection with its activities. In May 2010, a Dutch subsidiary registered <sunovion.eu> for use in connection with the activities of the Complainant’s European subsidiaries. A copy of the registration details are set out in Annex 5.

The Complainant states that the disputed domain name <sunovion-eu.com> was registered on June 30, 2020. It points out that the Respondent is not and has never been a representative, employee, or agent of the Complainant or its subsidiaries nor is it licensed to use the Complainant’s marks. Further, the Complainant states that the Respondent is not commonly known by the names “sunovion” or “sunovion-eu”.

In the absence of a Response no evidence is adduced by the Respondent. The Complainant however, adduces evidence of the Respondent’s use of the disputed domain name.

On November 12, 2020 lawyers for the Complainant sent an email reporting evidence of infringing use of the disputed domain name to the Registrar alleging that the Respondent had adopted the domain name for use in fraudulent transactions. A response was received informing the Complainant’s lawyers that the reseller had been informed and if no update was then received they would suspend the domain after December 11, 2020. No update was or has been received. The Complainant therefore filed the current Complaint. A copy of the relevant correspondence is set out in Annex 6.

The Complainant relies upon evidence that the disputed domain name is inactive and a website cannot be reached at the disputed domain name. This is despite the fact that the WhoIs report annexed at Annex 1 shows a screenshot from a website page that mirrors the Complainant’s website including use of the mark SUNOVION and other marks owned by the Complainant.

Even though there is no active website at the disputed domain name, persons utilizing that domain name have adopted email addresses based on the domain name and are representing themselves as legitimate employees of Sunovion Pharmaceuticals Ltd, a division of the Complainant, ostensibly for defrauding third parties. This can be seen from evidence provided in Annex 7.

On September 15, 2020, an email was sent from an email associated with the disputed domain name to a third party, requesting an order for USD 760,000 on behalf of the Complainant’s European division. It fraudulently listed the Complainant’s European division address, telephone, and fax number as its own contact details. The attached order document bore the Complainant’s trade mark SUNOVION and green prism logo which is also registered as a trade mark by the Complainant. It also bore the Complainant’s marketing slogan; “Innovation today, healthier tomorrow”. On November 10, 2020, a similar email was sent to a different third party with a document including the SUNOVION trade mark and green prism logo.

5. Parties’ Contentions

A. Complainant

The Complainant submits;

i. the disputed domain name is confusingly similar to the trade mark SUNOVION in which the Complainant has registered rights;

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

iii. the disputed domain name was registered and is being used in bad faith, noting in particular the reputation of the Complainant’s trade mark and the fraudulent use to which the disputed domain name was put.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

From the evidence of the Complainant’s trade mark rights set out in section 4 above, the Panel finds that the Complainant has registered trade mark rights in the mark SUNOVION.

The domain name combines the trade mark SUNOVION in its entirety together with a geographic term “eu” and a hyphen, under the generic Top-Level Domain (“gTLD”) “.com”.

The Panel agrees with the Complainant’s submission that the addition of the term “-eu” does not prevent the domain name being confusingly similar to the Complainant’s trademark. It is well-established that the use of a gTLD such as, in this case, “.com”, can be disregarded in considering confusing similarity.

The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark SUNOVION in which the Complainant has rights within paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It submits on the evidence set out in section 4 above that the Respondent has not been authorized or licensed by it to use the disputed domain name. It also submits that the Respondent is not commonly known by the names “sunovion” or “sunovion.eu”.

The Complainant also relies upon the fraudulent and bad faith use of the disputed domain name set out in section 4 above and shown by the documents exhibited at Annex 7. In this regard, the Panel notes section 2.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the consensus view of UDRP panels that use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. Here, the Respondent’s use of the disputed domain name to send fraudulent emails impersonating the Complainant clearly indicates a lack of rights or legitimate interests in the disputed domain name.

Furthermore, the Complainant submits that the Respondent has no relationship with the Complainant and that there is no evidence that the Respondent is known under the disputed domain name, which supports a finding that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1. In the absence of a Response or any contrary evidence, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case, and accordingly has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant points out that the disputed domain name was registered more than 10 years after the Complainant had acquired rights in the mark SUNOVION and registered its own domain name <sunovion.com>.

The Complainant submits that it is “inconceivable” that the Respondent was unaware of the Complainant and its trade mark SUNOVION when it chose to register the domain name and to utilize the domain name for fraudulent purposes. Accordingly, the Complainant submits that the Respondent, as at the date of registration of the disputed domain name, should have been and was actually aware of the goodwill and reputation (belonging to the Complainant) represented by the mark SUNOVION. This is established by the fact that the Respondent utilized emails incorporating the disputed domain name to impersonate the Complainant.

It is well-established, for example, by America Online Inc. v Anson Chan, WIPO Case No. D2001-0004, which is cited by the Complainant, that a Respondent’s knowledge of the Complainant’s trade mark prior to registration of the disputed domain name may constitute evidence of registration in bad faith.

The Respondent relies upon the evidence, set out above, of the use of the disputed domain name for fraudulent purposes. In particular, the use of an email address associated with the disputed domain name, in an attempt to defraud third parties who believed that they were dealing with actual employees of the Complainant and its personnel. This creates a likelihood of confusion with the Complainant’s mark, which the Respondent uses to attempt to attract Internet users for financial gain.

In the Panel’s view this evidence establishes that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website within paragraph 4(b)(iv) of the Policy.

It follows that the disputed domain name has been registered and is being used in bad faith within paragraph 4(a)(iii) of the Policy.

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 disputed domain name <sunovion-eu.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: February 8, 2021