World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Celgene Corporation v. Muzhgan Afzal Ashrafi

Case No. D2012-1126

1. The Parties

The Complainant is Celgene Corporation of Summit, New Jersey, United States of America, represented by Cozen O'Connor, United States of America.

The Respondent is Muzhgan Afzal Ashrafi of Dubai, United Arab Emirates.

2. The Domain Name and Registra

The disputed domain name <vidazaim.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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”).

The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on June 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2012.

The Center appointed Alan L. Limbury as the sole panelist in this matter on July 11, 2012. 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 is a biopharmaceutical company. Since 2004, it has marketed worldwide a drug for the treatment of blood disease and cancer under the trademark VIDAZA, which it registered, inter alia, in the United States on February 22, 2005 under No. 2,928,231 in International Class 5.

The Domain Name was registered on February 26, 2012. It resolves to a webpage generated by hosting automation software named “Parallels Plesk Panel” which states on the home page: “You see this page because you have set up your Web server for serving a new site, but have not uploaded the site content yet.”

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the Complainant’s VIDAZA trademark since it entirely incorporates the mark and adds the descriptive term “im”, standing for internal medicine or intramuscular.

The Respondent has no rights or legitimate interests in the Domain Name because the Respondent is not affiliated with the Complainant and is not a registered user, pharmacy or distributor of any of the Complainant’s biopharmaceutical products. The Respondent cannot claim to be known by the Domain Name and is not using the website for a bona fide offering of goods or services since the website is in the process of being set up. The Respondent failed to respond to correspondence from the Complainant advising of the Complainant’s global rights in the VIDAZA mark and requesting transfer of the Domain Name.

The Domain Name was registered and is being used in bad faith in an attempt to deceive consumers into believing they are visiting a website owned by the Complainant. The Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation and to trade off the Complainant’s substantial goodwill. At a minimum, by registering the Domain Name and using it to set up a temporary website, the Respondent has attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s VIDAZA mark as to the source, sponsorship, affiliation or endorsement of the website and has also registered the Domain Name primarily for the purpose of disrupting the business of a potential competitor.

There is also a health and safety risk to consumers since the website may be developed so as to offer these highly regulated prescriptive drugs for treatment of serious forms of cancers and blood diseases without authorization from the Complainant nor any supervision from medical professionals.

B. Respondent

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

6. Discussion and Findings

To qualify for cancellation or transfer of the Domain Name, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the Domain Name has been registered and is being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC V. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY V. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

Although domain names are registered in lower case only, throughout the Complaint the Domain Name is represented as “vidazaIM.com”, no doubt in an attempt to support the Complainant’s contention that the Domain Name consists of its trademark together with the letters “im”. In the absence of any submission by the Respondent that the Domain Name represents a different combination and should be understood differently, the Panel finds the Domain Name to be confusingly similar to the Complainant’s registered trademark VIDAZA, the letters “im” being insufficient to distinguish the Domain Name from that trademark and the generic Top Level Domain “.com” being inconsequential. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Panel accepts that the VIDAZA mark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show by concrete evidence that the Respondent does have rights or legitimate interests in the Domain Name. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b)(iv) provides:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location”.

In the absence of a Response, the Panel accepts that the Respondent must have had the Complainant’s well-known trademark in mind when registering the Domain Name and that this was done in order to trade off the reputation of that mark for commercial gain. Although the Respondent’s website is under construction, the confusing nature of the Domain Name is likely to lead Internet users to believe it is a website of the Complainant. Accordingly the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith in the circumstances set out in paragraph 4(b)(iv) of the Policy.

The Complainant has established this element of its case.

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 Domain Name <vidazaim.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: July 19, 2012

 

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