WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celgene Corporation v. Diana Claire
Case No. D2016-0922
1. The Parties
The Complainant is Celgene Corporation of Summit, New Jersey, United States of America (the "U.S."), represented by Cozen O'Connor, U.S.
The Respondent is Diana Claire of Summit, New Jersey, U.S.
2. The Domain Name and Registrar
The disputed domain name <celgenepharma.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2016. On May 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 2, 2016.
The Center appointed Martin Schwimmer as the sole panelist in this matter on June 14, 2016. 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
Complainant, Celgene Corporation, is a global biopharmaceutical company. It has provided goods and services including pharmaceutical products and drug delivery compounds in connection with its CELGENE trademark, for thirty years. Respondent registered the disputed domain name on March 5, 2016. The disputed domain name is not in use.
5. Parties' Contentions
Celgene Corporation has been providing global biopharmaceutical goods and services since 1986. It owns various U.S. trademark registrations covering the CELGENE trademark, several of which are incontestable, meaning that under U.S. law, the registrations may not be cancelled due to descriptiveness or to prior rights. Complainant provides information about its goods and services at "www.celgene.com". Celgene's revenue in 2015 was USD 9.26 billion.
Complainant contends that the disputed domain name is identical or confusingly similar to the CELGENE Trademark.
Complainant denies that Respondent has any license, permission, or authorization to use the Trademark, it is not referred to or commonly known as "Celgene", and has not make a bona fide offering of goods or services and, accordingly, that Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that its mark is well-known and that Respondent is passively holding the disputed domain name. Respondent did not acknowledge Complainant's communications. Such use under such circumstances constitutes registration and use in bad faith
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the CELGENE trademark. The Panel concludes that the disputed domain name is confusingly similar because the disputed domain name incorporates Complainant's CELGENE mark in its entirety, adding "pharma" (a short descriptor for Complainant's field of activity) and the generic Top-Level Domain ("gTLD") ".com".
Consequently, the Panel finds that Complainant has met the first element of the Policy.
B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent's absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(a)(ii) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the Trademark in a domain name or in any other manner. Complainant alleges that there is no such connection here. The Panel confirms that the disputed domain name is not in use.
In addition, Respondent has not submitted any reply to Complainant's contentions.
Therefore, in light of Complainant's unrebutted prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name
C. Registered and Used in Bad Faith
The Panel finds that Complainant has established that its CELGENE trademark is well known, as a result of its thirty years of extensive use of the mark. Respondent's inclusion of a term, "pharma," which refers to Complainant's filed of activity, puts beyond doubt whether Respondent has targeted Complainant.
Additionally, the Panel may make negative inferences based on Respondent's failure to respond to Complainant's contentions. Furthermore, the Panel notes that Respondent's contact information in the WhoIs listing for the disputed domain name is erroneous, which also may support a negative inference.
It has long been generally held in UDRP decisions that the passive holding of a domain name in such circumstances that incorporates a well-known trademark, without obvious legitimate purpose, will be deemed to be bad faith use pursuant to paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In view of the above the Panel's holding that the disputed domain name was registered and is being used in bad faith.
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 <celgenepharma.com> be transferred to Complainant.
Date: July 7, 2016