WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celgene Corporation v. Name Redacted
Case No. D2017-1954
1. The Parties
The Complainant is Celgene Corporation of Summit, New Jersey, United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <otezl.com> (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 2017, 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 Complainant on October 11, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2017.
The Center verified that the Complaint and 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 15, 2017. 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 states that it is “one of the largest biotechnology companies in the world with a market capitalization of over US$76 billion” and that it is “engaged primarily in the discovery, development and commercialization of novel therapies for the treatment of cancer and inflammatory diseases through gene and protein regulation.” Complainant further states that it is “the owner of all proprietary rights in and to the OTEZLA® pharmaceutical product, a prescription medicine that is in pill-form and is taken orally and which treats moderate to severe plaque psoriasis and psoriatic arthritis” and that “worldwide sales of OTEZLA® in the second quarter of 2017 alone totaled $358 million and are estimated to total more than $1.5 billion USD in 2017.”
Complainant states, and provides evidence to support, that it is the owner of at least three U.S. trademark registrations for marks that consist of or include OTEZLA, including U.S. Reg. No. 4,331,247 for OTEZLA for use in connection with “pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical preparations that modulate the immune system; pharmaceutical preparations for the treatment of certain blood diseases and cancers” (registered May 7, 2013). These trademarks are referred to herein as the “OTEZLA Trademark.”
The Disputed Domain Name was registered on August 16, 2017, and is being used “in connection with a commercial link service, known as a ‘link farm,’“ a screenshot of which shows links labeled, among other things, “Side Effects of Psoriasis,” “Medication for Psoriasis” and “Medication Card.”
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the OTEZLA Trademark because, inter alia, the Disputed Domain Name “wholly incorporates” the OTEZLA Trademark “except for one letter, a missing ‘A’ at the end of the domain.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with Complainant, and there is no evidence to suggest that Respondent has registered the OTEZL.COM domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent has attempted to take commercial advantage of Complainant’s trademarks and commercial reputation and to trade off Complainant’s goodwill”; “[u]se of the OTEZL.COM domain name in connection with a commercial link service [is] designed to lure Internet users and divert them to other commercial sites”; and Respondent failed to respond to a demand letter sent by Complainant.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the OTEZLA Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the OTEZLA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “otezl”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the Disputed Domain Name contains the OTEZLA Trademark in its entirety other than a missing letter “a”. As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” As this Panel has previously said, a single letter difference is irrelevant for purposes of confusing similarity. Bay Bread LLC d/b/a La Boulange v. Tigran Mirzoyan, WIPO Case No. D2015-1040. See also, e.g., Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460 (substitution of a single letter “is insignificant for purposes of confusing similarity” and “is widely known as ‘typosquatting’“).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with Complainant, and there is no evidence to suggest that Respondent has registered the OTEZL.COM domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Further, Respondent’s failure to respond to Complainant’s demand letter is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
Accordingly, the Panel finds that Complainant has proven the third element 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 Disputed Domain Name, <otezl.com> be transferred to Complainant.
Douglas M. Isenberg
Date: November 27, 2017
1 As it appears, the Respondent has fraudulently used the Complainant’s corporate name when registering the Disputed Domain Name. The Panel has decided that no purpose can be served by including the named Respondent in this Decision, and has therefore redacted Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 The original Complaint was filed against a privacy shield through which the Disputed Domain Name was registered.