The UDRP is not a general court for trademark infringement, but a niche forum for a particular kind of infringement. It authorizes a Panel to determine whether a domain name incorporating a complainant’s trademark violates the terms of a respondent’s registration, i.e. that it “will not infringe upon or otherwise violate the rights of any third-party.” Paragraph 2 of the Policy. The registration agreement is similarly worded. The Panel is not authorized to rule on whether the registration and use of the domain name is a trademark infringement.
The distinction between a violation of a third-party’s trademark rights and a trademark infringement is subtle and not always clear, but it is important to understand the outer limits of the UDRP. Some light is shed on the distinction in two cases by the same panelist, Sunovion Pharmaceuticals Inc. v. ProCommerce, LLC, D2012-0232 (WIPO March 28, 2012) and Sunovion Pharmaceuticals Inc. v. Gadd Formulas, LLC, D2012-0234 (WIPO March 28, 2012). Respondents did not respond in either case.
While the Respondents in the two cases are different, the Complainant alleges that both are controlled by a third party who it is currently suing in the United States District Court for the District of Massachusetts. In that case Complainant asserts claims of trademark infringement, unfair competition, and trademark dilution under United States federal law and Massachusetts state law. It alleges that the defendant Health Science Nutrition Inc. “owns and/or operates websites” at which Lunexor is sold, including the disputed domain names in the proceedings,(ProCommerce) and(Gadd). Complainant owns the trademark, LUNESTA, which is also the name of a prescription sleep drug.
Only the first four letters, “lune” are identical. The question is whether the aural similarity (which is “not obvious”) has any meaning:
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.
The Complainant itself points to the problem in these cases. Respondent actually sells a product by the name “Lunexor,” which is identical to the dominant feature of the disputed domain name. This would appear to support Respondent’s right or legitimate interest in the domain name. However,
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”.
The implication is that the similarity between the domain name and trademark is not mere happenstance because the Respondents’ product is infringing. As presented, the “infringement” is outside the scope of the Policy. “At this point all the Panel has to rely upon are Complainant’s allegations in this proceeding and in the Massachusetts lawsuit.” The Panel notes
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…. An action for infringement (or contesting a trademark application in the USPTO … 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.
In a UDRP proceeding, even if the evidence is persuasive of product infringement, complainant would “not automatically make out a claim for cybersquatting, and vice versa.”