The Complainant is Celgene Corporation of Summit, New Jersey, United States of America (“USA” or “U.S.”), represented by Cozen O’Connor, USA.
The Respondent is Domain Admin / This Domain is For Sale, Privacy Protected Registrant, Home of Domains of Phoenix, Arizona, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2017. On June 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2017, 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 proceedings commenced on June 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2017.
The Center appointed Evan D. Brown as the sole panelist in this matter on July 14, 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
The Complainant is a global biopharmaceutical company with billions of dollars in revenue. It owns several trademark registrations for the mark CELGENE, both as word marks and as part of design marks, including U.S. Registration No. 2,379,836 for various pharmaceutical preparations, having a date of first use of September 29, 1998 and a registration date of August 22, 2000.
The Respondent registered the disputed domain name on May 16, 2017, just four days after the Complainant filed its trademark application (on an intent to use basis) with the U.S. Patent and Trademark Office for the mark CELGENE EMPOWERED and Design (Serial No. 87/447,237). The Respondent makes no meaningful use of the disputed domain name, allowing the disputed domain name to be listed for sale for USD 950. In response to correspondence from counsel for the Complainant, the Respondent offered to sell the disputed domain name for USD 950. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark CELGENE in its entirety. The additional word “empowered” in this context does not meaningfully distinguish the disputed domain name from the Complainant’s mark.
Similarly, the addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Here, the gTLD “.com” is without legal significance since use of the gTLD is technically required to operate the disputed domain name. The suffix “.com” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. See F. Hoffmann-La Roche AG v. Anoymous anonymous,WIPO Case No. D2009-1599.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark CELGENE, as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you 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 (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 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.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
The Complainant has provided evidence of its intent to use of a design mark that includes the words CELGENE EMPOWERED – the very words comprising the disputed domain name.
In addition, paragraph 4(b)(i) of the Policy states that “shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”
In this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Respondent’s offer to sell the disputed domain name for an amount in excess of out-of-pocket costs is a classic indicia of bad faith registration and use. 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.
Evan D. Brown
Sole Panelist
Date: July 28, 2017
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