The Complainant is Celgene Corporation of Summit, New Jersey, United States of America ("U.S."), represented by Cozen O'Connor, U.S.
The Respondent is Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2016, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 2, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 11, 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
The Complainant is an U.S. biotechnology company that manufactures drug therapies for cancer and inflammatory disorders. It is one of the largest biotechnology companies in the world.
The Complainant is the owner of several CELGENE trademarks. It owns inter alia:
- CELGENE U.S. word trademark, registered on August 8, 2000, registration No. 2379836 for goods and services in class: 5;
- CELGENE U.S. word trademark, registered on September 28, 2004, registration No. 2888517 for goods and services in classes: 1, 5, 40, 41, 42;
- C CELGENE U.S. combined trademark, registered on November 27, 2012, registration No. 4250217 for goods and services in classes: 5, 35, 41, 42, 44.
The Complainant owns many domain names that include its distinctive mark such as: and .
The disputed domain name was registered on November 30, 2015. 5. Parties' Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to its CELGENE mark since it wholly incorporates the trademark, which is the first and dominant term in . Furthermore, the Complainant asserts that the disputed domain name is identical to its domain name with the exception of one letter which increases the likelihood of consumer confusion and clearly infringing upon the Complainant's rights in its CELGENE mark.
Secondly, according to the Complainant, the Respondent is not affiliated with the Complainant in any way and there is no evidence suggesting that the Respondent has registered the disputed domain name for the bona fide offering of legitimate goods or services. Moreover, the Complainant contends that the disputed domain name is used in connection with a commercial link service, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to its trademark.
Thirdly, the Complainant alleges the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent has full knowledge of its rights in CELGENE mark. The Complainant emphasizes that the Respondent is attempting to sell the disputed domain name for USD 799 via banner at the top of this website which the disputed domain name resolves to. In the Complainant's opinion, it means that the disputed domain name was registered and is being used "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] documented out-of-pocket costs directly related to the domain name". Further, the Complainant contends that website at the disputed domain name presents links to third-party commercial sites with headings such as "Patient Surveys" which are associated with similar services to those offered by the Complainant under its CELGEN marks. Therefore, the Complainant asserts that the Respondent's use of the disputed domain name in connection with a link farm with links to services similar or identical to those offered by the Complainant is likely to give rise to confusion as to an association, affiliation, or sponsorship between the Complainant and the Respondent, and is further evidence of bad faith pursuant to the Policy.
Finally, the Complainant states that on December 7, 2015, it sent the Respondent a letter in which it notified the Respondent of its rights in the CELGENE mark and requested the transfer of the disputed domain name. Then, on December 20, 2015, the Complainant sent the Respondent a follow up letter once again notifying him of its rights and requesting that he transfers the disputed domain name. In the Complainant's opinion the fact that the Respondent has ignored the above correspondences confirms its bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The Complainant holds many valid CELGENE trademark registrations. The disputed domain name incorporates the Complainant's CELGENE mark in its entirety. At the same time, the CELGENE mark is the most distinctive part of the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
In the Panel's opinion the phrase "riskmanagment" itself does not distinguish the disputed domain name so it cannot undermine the finding of confusing similarity. Moreover, the Complainants owns which the disputed domain name is identical to, despite an obvious misspelling.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix ".com" may generally be disregarded as a generic Top-Level Domain being a necessary component in a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Consequently, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the complainant. However, it is well established by previous UDRP panel 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. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to the lack of rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) there is no evidence suggesting that the Respondent has registered the disputed domain name for the bona fide offering of legitimate goods or services; and (c) the website that the disputed domain name resolves to is used in connection with a commercial link service and it is offered for sale.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use of the disputed domain name in bad faith.
Firstly, the disputed domain name was registered on November 20, 2015. It incorporates the CELGENE trademark, which was registered years before and is commonly known worldwide in the biotechnology industry. In the Panel's opinion, the notoriety of use of the CELGENE trademark together indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name.
Secondly, the disputed domain name resolves to a webpage containing sponsored links, from which the Respondent likely benefits. It should be noted that the headings under these links are presented can be easily associated with the products and services offered by the Complainant. All facts considered, the Panel finds that the Respondent tries to create a likelihood of confusion with the Complainant's trademarks for the purpose of commercial gain.
Moreover, the Panel finds that the Respondent's failure to answer the Complainant's cease and desist letter may be a further indication of bad faith.
As the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of or affiliation with the website as illustrated in paragraph 4(b)(iv) of the Policy, the bad faith requirement under paragraph 4(a)(iii) of the Policy is fulfilled. 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 be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: February 22, 2016
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