WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celgene Corporation v. Ourcelgene.com / Milan Kovac
Case No. D2011-2094
1. The Parties
The Complainant is Celgene Corporation of New Jersey, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Ourcelgene.com of Shanghai, China / Milan Kovac of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <ourcelgene.com> is registered with HebeiGuojiMaoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 30, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 7, 2011, 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 8, 2011. On December 7, 2011, the Center transmitted an email communication to the Parties in both English and Slovakia regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 16, 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 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. The Complainant trades under the Celgene name, and is the source of and owns all intellectual property rights in and related to its pharmaceutical products, drug delivery compounds, research and related goods and services. One of the main components of the Complainant’s business encompasses the research, development, sale and distribution of its Celgene family of pharmaceutical products. All the Complainant’s pharmaceutical products and drug delivery compounds bear the CELGENE mark on the packaging and in all marketing materials. The Complainant’s well-known pharmaceutical products have achieved great success since their introduction in 1987, and have consistently utilized the CELGENE mark.
The Complainant undertakes strenuous marketing and promotional activity under its CELGENE mark, including advertising and promotions on the Internet through various websites, including its “flagship” website at the domain name <celgene.com>.
In the year 2011, the Complainant’s sales of products under its CELGENE mark world-wide was some USD3.265 billion (three billion, two hundred and sixty-five million U.S. dollars), and it is expected that its 2011 turnover of products under its CELGENE mark world-wide will be circa USD4.85 billion (four billion, eight hundred and fifty million U.S. dollars).
The Complainant has provided details of extensive trademark registrations of CELGENE in respect of the products sold by the Complainant, in the United States, dating from 2000, and by International Registration (including Madrid Protocol extensions to ten countries or territories), dating from 2003, and claims to have registered its CELGENE mark in “all jurisdictions throughout the world”. The Complainant also claims extensive goodwill in the trade mark CELGENE, arising from its trading activities globally under the trademark, prior to the date of registration of the disputed domain name, on April 1, 2006.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its trademark CELGENE, as it merely adds the descriptive term “our” to the Complainant’s mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name, points out that the Respondent is not affiliated with the Complainant, and contends that there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. The Complainant has provided details of use of the website at the disputed domain name with links to a “link farm” displaying information as to certain of the Complainant’s other trademarks, and with “keywords” which potentially link to on-line pharmacy websites which sell unauthorized or counterfeit pharmaceutical products. The Complainant contends that this usage proves lack of legitimate interests in the disputed domain name.
In connection with bad faith, the Complainant contends that the fact that the Respondent has used and is using the disputed domain name to advertise certain of its drugs under trademarks other than CELGENE deceives consumers into falsely believing that an association, affiliation or sponsorship relation exists between the disputed domain name and the Complainant’s mark, and that there can be little question that the Respondent’s adoption and use of the disputed domain name is in bad faith. The Complainant further contends that the Respondent has attempted to take commercial advantage of its trademarks and commercial reputation and trade off its substantial goodwill. Additionally, The Complainant contends that the Respondent, by registering the disputed domain name and using it to advertise the Complainant’s goods, at a minimum, has registered the disputed domain name (1) attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CELGENE marks as to the source of sponsorship, affiliation or endorsement of the website, and of the goods being advertised on the website, and (2) primarily for the purpose of disrupting the business of a competitor, both of which are circumstances of bad faith registration pursuant to the Policy, paragraph 4(b)(iii)-(iv).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
On the question of the language of the proceeding, the Registrar confirmed that the language of the Registration Agreement is Slovak. The Respondent did not comment on this question. The Complainant requests that English be the language of the proceeding, and argues that the Respondent exhibits familiarity with English, because (1) the website at the disputed domain name offers unautherized proprietary drugs using the Complainant’s trademark to an English-speaking market, which includes documentation solely in English, (2) solely featured content on the associated website, including contact information, in the English language, and (3) the term “our” in the disputed domain name is an English word.
The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the proceeding be English.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel in this case has no hesitation in recognizing the Complainant’s trademark CELGENE as well-known.
It is well-established in previous UDRP decisions that indicators (“.com”, “.info”, “.net”, “.org”) are legally irrelevant to the consideration of confusing similarity between a trade mark and a domain name. It is also well-established that the mere addition of a descriptive term to a well-known trademark is insufficient to avoid a finding that the disputed domain name and the trademark are confusingly similar. In these circumstances the Panel considers the Complainant’s arguments in relation to confusing similarity to be compelling, and, therefore, finds that the Complainant has satisfied the provisions of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel draws the appropriate conclusion. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel considers that the circumstances of this case as outlined by the Complainant, in which, in its view, the Respondent’s registration of the disputed domain name must have been the result of pre-knowledge of the Complainant’s well-known trademark, and was, consequently, opportunistic, are such as to justify a finding that the disputed domain name was registered in bad faith.
The wording of paragraph 4(a)(iii) of the Policy requires, in the Panel’s opinion, also a consideration as to whether the disputed domain name is being used in bad faith.
The Panel accepts that the use of the website operated under the disputed domain name, as proved by the Complainant, meets the test of use in bad faith established in previous UDRP proceedings, and, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <ourcelgene.com> be transferred to the Complainant.
George R. F. Souter
Dated: January 30, 2012