WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Celgene Corporation v. James Ding

Case No. D2013-0970

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 (“U.S.”).

The Respondent is James Ding of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <celgenpharm.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2013, 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. On June 5, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On June 8, 2013, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 June 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2013.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 26, 2013. 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.

The Panel notes that in accordance with paragraph 2(a)(i), written notice was sent to all postal-mail and facsimile addresses shown in the WhoIs, and supplied by the Registrar. Written notice however was not sent to the physical address listed on the website at the disputed domain name. While it is not a requirement for the Notification of Complaint under paragraph 2(a) of the Rules (specifically paragraph 2(a)(ii)(C)) that written notice be sent to the physical address listed on the website at the disputed domain name, the Panel has ordered that written notification be sent to the physical address and the due date of the decision was extended accordingly. The Respondent did not respond to the written notice (in both English and Chinese) to the additional contact details on the website of the disputed domain name, although such written notice appears to have been successfully delivered by the courier.

4. Factual Background

The Complainant Celgene Corporation is an integrated global biopharmaceutical company engaged primarily in the discovery, development and commercialization of novel therapies for the treatment of cancer and inflammatory diseases through gene and protein regulation. Celgene owns the CELGENE trademark and owns all intellectual property rights in and related to its pharmaceutical products, drug delivery compounds, pharmaceutical research and related goods and services. One of the main components of the Complainant Celgene’s business includes research, development, sale and distribution of the CELGENE pharmaceutical products. The Complainant has adduced evidence to show that its well-known pharmaceutical products and services have achieved great success since the Complainant entered the marketplace as an independent biotechnology company in 1986 and such products and services have consistently been associated with the CELGENE mark since that time. The Complainant Celgene is one of the largest biotechnology companies in the world with a market capitalization of over USD 42 billion. Its revenue for 2012 exceeded USD 5.5 billion, and its revenue for 2013 is expected to exceed USD 6 billion.

The Complainant is the registered trademark owner of the CELGENE marks which include the following:

- U.S. Reg. No. 2,379,836 for CELGENE (word mark) for “pharmaceutical preparations for use in the treatment of immunological, inflammatory and neurological disorders” in International Class 5, which was filed on January 21, 1997, allowed in September of 1999 and registered on August 22, 2000, and used by Celgene in connection with those goods at least as early as September 29, 1998. Further, Registration No. 2,379,836 is incontestable and conclusively presumed valid and enforceable.

- U.S. Reg. No. 2,888,517 for CELGENE (word mark) for “biochemical catalysts for use in medical research; biological preparations for medical purposes, namely for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; enzyme preparations for industrial purposes; enzymes for industrial purposes; proteins for industrial and human consumption, namely animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; chemical preparations used to protect crops in the agricultural and horticultural field; medicinal and biological preparations for medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system” in International Class 1, “biological preparations for medical purposes, namely for use in the treatment of immunological, inflammatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflammatory and neurological disorders for the identification, analysis, prevention, detection, diagnosis, prognosis and treatment; biological preparations for use in medicinal tests, inoculations, and treatment of diseases, namely, immunological, inflammatory and neurological disorders and cancer; culture media, namely, tissue culture media and bacteriogical culture media for medical use; medicinal and biological preparations for pharmaceutical and clinical use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system” in International Class 5, “manufacturing pharmaceutical products for others; custom synthesis of DNA to the order and specification of others; custom manufacturing services, namely, manufacturing agrochemicals to the specification of others” in International Class 40, “educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith” in International Class 41, and “research in the fields of chemicals and pharmaceuticals; product safety testing in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely, pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping base on the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; providing medical and pharmaceutical research information; scientific research services; design for others in the field of DNA-based assays, DNA sequencing protocols, immunoassay and methods for drug discovery; scientific research, namely, development of pharmaceuticals or diagnostic methods for others” in International Class 42, which was registered on September 28, 2004, and used by Celgene at least as early as December 31, 1986. Further, Registration No. 2,888,517 is incontestable and conclusively presumed valid and enforceable.

- U.S. Reg. No. 4,250,217 for C CELGENE & Design for “pharmaceutical preparations for use in the treatment of immunological, inflammatory and neurological disorders” in International Class 5, “administration of patient reimbursement programs; administering pharmacy reimbursement programs and services” in International Class 35, “educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith; education services, namely, providing mentoring, tutoring, classes, seminars, and workshops in the fields of highlighting the advancements made in cancer treatments and discussing the importance of continuing research to develop innovative new treatments” in International Class 41, “Development and testing services in the fields of biotechnology, chemistry and pharmaceuticals; providing an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports; scientific study and research in the fields of the prevention, treatment and management of illness, health care delivery and the scientific aspects of health care policy, health care cost management and financing as these fields impact on quality of health care; research in the fields of chemicals and pharmaceuticals; research and testing services in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely, pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping based on the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; scientific research services; scientific research, namely, development of pharmaceuticals or diagnostic methods for others” in International Class 42, “providing on-line information in the field of diagnosis and treatment of cancer; providing an on-line computer database featuring information relating to diagnosis and treatment of cancer; providing medical and pharmaceutical information services; providing links to web sites of others featuring information about the diagnosis and treatment of cancer” in International Class 44, which was registered on November 27, 2012, and used by Celgene in connection with those goods in International Class 5 at least as early as September 29, 1998, and with those services in International Classes 35, 41, and 42 as early as 1986, and with those services in International Class 44 at least as early as June 28, 2001.

Furthermore, the Complainant is the owner of the following domain names, <celgene.com> and <celgene.cn> through which they provide information to the public about the CELGENE pharmaceutical products, drugs, research, and important safety information and treatment resources.

The Respondent registered the disputed domain name on July 29, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <celgenpharm.com> is confusingly similar to trademarks or service marks in which the Complainant has prior rights for the following reasons:

1. That the Complainant owns the CELGENE trademark and its well-known pharmaceutical products and services have achieved great success since the company entered the marketplace as an independent biotechnology company in 1986 and such products and services have consistently been associated with the CELGENE mark since that time.

2. That through extensive marketing and promotional efforts, the quality of the Complainant’s products, the CELGENE mark and CELGENE pharmaceutical products and services has become well-known and famous throughout the pharmaceutical industry and in the minds of the public. The Complainant has developed an excellent reputation for research and development and commercialization of pharmaceuticals and drug delivery compounds and methods, as well as its medical, informational and technical consultation services related to its pharmaceuticals. Indeed, the Complainant and its CELGENE mark have acquired a valuable reputation and goodwill among the public as consumers, purchasers and members of the public at large have become familiar with the CELGENE pharmaceutical products.

3. With regard to China, the Complainant has offices in Shanghai, Beijing, Nanjing and Guangzhou and the Complainant’s Shanghai office employs more than 60 people. The Complainant’s drugs have been widely promoted and publicized in China and the Complainant has used the CELGENE marks on goods and signs displayed at exhibitions sponsored or recognized by the Chinese government. The Complainant is also the owner of the “www.celgene.cn” website, which provides information on Celgene in China. This domain name was registered on June 14, 2005. As a result of these and other activities, Celgene’s CELGENE mark has become widely known in China and has garnered significant goodwill and public recognition in this jurisdiction.

4. The Complainant contends that it has used its CELGENE mark, sold its CELGENE pharmaceutical products in commerce, published trademark applications in the CELGENE mark, and garnered significant brand awareness in the worldwide pharmaceutical marketplace long before the Respondent registered the disputed domain name <celgenpharm.com>, which was registered on July 29, 2000. It is further evident that the Complainant has continued to use, register and globally expand its rights in the CELGENE brand since it first commenced use of the CELGENE mark in 1986. In short, given the Complainant’s extensive, exclusive, and substantial use of the CELGENE mark—and the Complainant’s recognition in the pharmaceutical marketplace by the year 2000—there can be no question that the Complainant has prior rights in and to the CELGENE mark and has rights through its zone of natural expansion to use the CELGENE mark in China, and that the Respondent had knowledge of these rights prior to registering the disputed domain name <celgenpharm.com>.

5. The Complainant contends that the disputed domain name <celgenpharm.com> is confusingly similar to the Complainant’s CELGENE mark. Indeed, the disputed domain name <celgenpharm.com> commences with the term “Celgen,” which is the dominant term in the disputed domain name and, with the exception of a missing “e” after “gen,” is identical to Celgene’s CELGENE mark. The “pharm” portion of the disputed domain name <celgenpharm.com> further links the “Celgen” portion of the name with CELGENE, the pharmaceutical company. Furthermore, the generic “.com” domain extension does not add any distinction to the disputed domain name <celgenpharm.com>.

The Complainant contends that the Respondent has no legitimate interests in the disputed domain name for the following reasons:

1. That the Respondent does not bona fide offer goods or services via its “www.celgenpharm.com” website. The Respondent is not using the “www.celgenpharm.com” website to sell goods and services under the mark CELGENPHARM (or CELGENPHARM.COM). While the Respondent’s website previously displayed the term “Celgen” in English, the Respondent removed this term from its website in response to a cease-and-desist letter sent on behalf of Celgene in April 2013, thereby implicitly admitting it has no legitimate interests in the “Celgen” term.

2. The Complainant contends that there is nothing in the record suggests that the Respondent has been commonly known by the disputed domain name. To the contrary, the disputed domain name <celgenpharm.com> is registered to James Ding, which is plainly the name of an individual. There is no evidence that Mr. Ding owns any trademarks in the term CELGENPHARM and nowhere on the “www.celgenpharm.com” website does it appear that CELGENPHARM or CELGEN PHARM is being used as a trademark.

3. That the Respondent has made no effort to associate himself with the disputed domain name <celgenpharm.com> and there is no indication that the public has come to commonly recognize the Respondent by the disputed domain name <celgenpharm.com>.

4. That the Complainant has not authorized the Respondent (as an individual, business, or other organization) to use the CELGENE mark. The Respondent’s use of the disputed domain name <celgenpharm.com> does not constitute bona fide use, as the Respondent’s sole intent behind registering and using the website was and is to syphon off of the Complainant’s famous CELGENE mark and the associated goodwill. The Respondent’s use of <celgenpharm.com> is plainly a bad-faith attempt to deceive consumers into believing that consumers are visiting a website owned by the Complainant based on the incorporation of a term nearly identical to the Complainant’s well-known CELGENE mark along with a descriptive pharmaceutical term.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith for the following reasons:

1. That Respondent had knowledge of the Complainant’s CELGENE mark and presence in the pharmaceutical marketplace prior to registering the disputed domain name <celgenpharm.com> but, despite such knowledge, nonetheless decided to proceed with the registration of the same in a clear attempt to syphon off of the Complainant’s goodwill.

2. Given the fact the Respondent also conducts business in the pharmaceutical sector, the Complainant contends that it is not possible for the Respondent not to have knowledge of the Complainant and its widely known CELGENE mark at the time of registration of the disputed domain name <celgenpharm.com>.

3. That the Respondent continued (and continues) to operate the disputed domain name <celgenpharm.com> in a bad faith to attempt to attract the Complainant’s customers and syphon off of the Complainant’s goodwill. There can be little question that the Respondent’s adoption and use of <celgenpharm.com> was and is in bad faith and that the Respondent’s registration and use of the disputed domain name constitutes a bad faith attempt to deceive consumers into believing that they are visiting a website owned by the Complainant—based on the incorporation of a near exact reproduction of the Complainant’s well-known CELGENE mark with a descriptive medical abbreviation—when they are not.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

1. The Complainant has adduced evidence to show that the Respondent James Ding, also known as Ding Bang (丁邦), is a permanent resident of the U.S., was educated and had worked in the U.S.for over 13 years, and thus, is familiar with the requested language. The Respondent obtained a Master of Business Administration degree from American University in Virginia, U.S. He had worked at the Mayo Clinic for six years (1987-1993), and founded Kanda (also known as Kangda) Medical and Biological Engineering Center in San Diego, California, U.S. in 1994. He served as the chairman of this U.S. Company until 2000. Given the Respondent’s extensive work history, educational background and permanent residency status in the U.S., sufficient evidence exists, and has been entered into the record, that Respondent uses and exhibits familiarity with the requested language. In addition, the Complainant also showed that the Complainant had previously corresponded with the Respondent in English.

2. The Respondent is clearly familiar with English based on his selection and registration of the disputed domain name <celgenpharm.com>. <celgenpharm.com> combines terms with English-only definitions, namely, “pharm”, an abbreviation of “pharmaceuticals,” and “Celgen”, a coined term which is confusingly similar to the Complainant’s CELGENE mark and company name and has no known Chinese definition or transliteration.

3. Further, the Domain Name Registration Agreement with the concerned registrar, Xin Net Technology Corp. for this English-only domain name is in English (The Registrar later confirmed Chinese as the language of the Registration Agreement).

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, he could have communicated this to the Center and the Panel will rule accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the CELGENE mark for pharmaceutical products and preparations in the treatment of immunological, inflammatory and neurological disorders in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the CELGENE mark in the U.S. and registered trademark rights in China (see Annex O to the Complaint), the country which the Respondent appears to reside. The Panel finds that the Complainant’s CELGENE mark is a widely-known mark, particularly within the pharmaceutical sector in respect of the pharmaceutical products and services offered by the Complainant.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. Furthermore, it is also pertinent to have regard to the distinctiveness of the Complainant’s trademark. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name consists of the Complainant’s mark CELGENE in almost its entirety, less the last letter “e” followed by the word “pharma” and the generic Top Level Domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “Celgen” which for all intents and purposes is nearly identical to the Complainant’s registered trademark CELGENE, less the last letter “e”. A deliberate misspelling of the Complainant’s trademark CELGENE does not suffice to distinguish the disputed domain name from the Complainant’s trademark for purposes of this proceeding. The addition of the word “pharma” which is understood as an abbreviation of the words “pharmacy” or “pharmaceutical” also does not provide the necessary distinction. In fact, given the widespread fame of the Complainant’s CELGENE mark, particularly within the pharmaceutical sector, the addition of the word “pharma” has the effect of heightening consumer’s confusion that this domain name may be associated or affiliated with the Complainant and its CELGENE trademark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic Top Level Domain is not a distinguishing factor.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s CELGENE mark, particularly within the pharmaceutical sector; (b) the distinctive character of the Complainant’s CELGENE mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the CELGENE mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “celgenpharma” in its business operations;

2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the CELGENE mark;

3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4. Although the registration of the disputed domain name predates the registration of the Complainant’s CELGENE mark, the Panel accepts the evidence adduced that the Complainant has been using the CELGENE mark from as early as 1986 and as a consequence of the long and substantial use, the Complainant and its CELGENE mark enjoy a widespread reputation and high degree of recognition, particularly within the pharmaceutical sector. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the CELGENE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As the registration of the disputed domain name predates the registration of the CELGENE mark, it would have been pertinent for the Respondent to explain why it has chosen to use <celgenpharm.com> which incorporates a substantial part of the Complainant’s CELGENE mark. However, the Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. Although the registration of the disputed domain name predates the registration of the Complainant’s CELGENE mark, the Panel accepts the evidence that the Complainant has been using the CELGENE mark from as early as 1986 and as a consequence of the long and substantial use, the Complainant and its CELGENE mark enjoy a widespread reputation and high degree of recognition, particularly within the pharmaceutical sector. The Panel further accepts the evidence adduced by the Complainant which shows that the Respondent has extensive work experience in the pharmaceutical sector and given the widespread reputation of the Complainant and its CELGENE mark, it is hard to accept the contention that the Respondent does not have prior knowledge of the Complainant and its mark. Furthermore, in this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the widespread reputation of the Complainant and its CELGENE mark, particularly within the pharmaceutical sector, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has substantial Internet presence through its domain names <celgene.com> and <celgene.cn>. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired substantial fame, reputation and notoriety especially in a niche sector in which the Respondent has experience and familiarity in, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. As the registration of the disputed domain name predates the registration of the CELGENE mark, it would have been pertinent for the Respondent to explain why it has chosen to use <celgenpharm.com> which incorporates a substantial part of the Complainant’s CELGENE mark. However, the Respondent has failed to do so. Thus, the Panel concludes that there is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, there is evidence to show that the Respondent has registered and used the disputed domain name to deceive consumers into believing that they are visiting a website owned by the Complainant when it is not the case. This is buttressed by the fact that the website upon which the disputed domain name resolves continues to be active with working links. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s CELGENE mark, particularly within the pharmaceutical sector and a lack of plausible explanation for the choice of incorporating the Complainant’s famous mark in the disputed domain name, the use by the Respondent of the disputed domain name to offer products and services in competition with the Complainant without being authorized or approved by the Complainant or its licensees is certainly a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <celgenpharm.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: September 18, 2013