Complainant is Celgene Corporation of Summit, New Jersey, United States of America (“United States”), represented by Cozen O’Connor, Pennsylvania, United States.
Respondent is John Rashad, Esq. of Saint Paul, Minnesota, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2017. On December 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2017, 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 December 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2018. The Response was filed with the Center on December 27, 2017.
On January 5, 2018, Complainant filed a supplemental statement in response to Respondent’s December 27, 2017 Response.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 8, 2018. 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 engaged primarily in the discovery, development and commercialization of novel therapies for the treatment of cancer and inflammatory diseases. One of Complainant’s pharmaceutical products is REVLIMID, which is used for the treatment of multiple myeloma cancer and myelodysplastic syndromes (“MDS”). Complainant is the owner of trademark registrations for the REVLIMID mark in the United States, the earliest of which issued to registration on February 8, 2005 (Registration No. 2,925,808). Complainant also owns the domain name .
Respondent is an individual located in St. Paul, Minnesota, United States. Respondent is a domain investor who buys, registers, develops and sells domain names. Respondent registered the disputed domain name on November 11, 2017.
On November 22, 2017, Complainant’s representative sent Respondent a demand letter regarding Respondent’s registration of the disputed domain name. On the same day, Respondent sent an email response to Complainant in which Respondent rejected Complainant’s contentions, but offered to sell the disputed domain name to Complainant. The parties had subsequent communications and on November 27, 2017, Respondent offered to sell the disputed domain name to Complainant for USD 10,000. There were no further communications between the parties.
At the time of drafting the decision, the disputed domain name did not resolve to an active web page or website. 5. Parties’ Contentions A. Complainant
Complainant asserts that is the owner of all rights in the REVLIMID mark and that its REVLIMID pharmaceutical product is well-known to consumers. Complainant further asserts that is has extensively promoted its REVLIMID pharmaceutical product and that sales of such in 2017, alone, have exceeded USD 8 billion.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s REVLIMID mark because it contains the REVLIMID mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the term “generic” does not distinguish the disputed domain name, as the term is simply a reference to a type of pharmaceutical product and, thus, consumers will likely have the false belief that the disputed domain name is owned, sponsored or endorsed by Complainant.
Complainant argues that Respondent does not have any bona fide rights or legitimate interests in the disputed domain name because Respondent is not affiliated with Complainant, is not licensee of Complainant, has not been to authorized to use Complainant’s REVLIMID mark, and is not commonly known as or associated with the disputed domain name. Complainant contends that there is no evidence that Respondent has used the disputed domain name for a bona fide offering of goods or services or for a claimed consumer information page to make patients aware of the generic alternative to REVLIMID. In that regard, Complainant maintains that the generic version of REVLIMID is known as Lenalidomide. Complainant further asserts that Respondent is a domainer who has registered the disputed domain name for purposes of quickly selling the disputed domain name to a pharmaceutical company for profit. Complainant argues that Respondent does not have a history of creating patient education websites, and that Respondent’s sole actions with the disputed domain name have been to offer the disputed domain name for sale, and, in particular, to sell the disputed domain name to Complainant for USD 10,000 with a threat of transferring it to another party within four business days if Complainant did not agree to Respondent’s offer.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was clearly aware of Complainant’s REVLIMID mark, given that disputed domain name incorporates Complainant’s exact trademark and will be seen as connected to Complainant, and given that Complainant provided notice to Respondent of its prior rights in REVLIMID. Complainant further asserts that Respondent’s bad faith is established by Respondent’s attempt to sell the disputed domain name within days after registering it and his offer to sell it to Complainant for USD 10,000 with a threat of transferring the disputed domain name to another party if Complainant did not agree to the offer within four business days. B. Respondent
Respondent contends that neither the registration nor the use of the disputed domain name directly or indirectly infringes upon the legal rights of Complainant.
Respondent contends that he registered the disputed domain name for purposes of preventing pharmaceutical companies such as Complainant from blocking access to information regarding drugs being offered in the market place. Respondent argues that he has a First Amendment right to register the disputed domain name for the fair use purpose of an online platform for freedom of expression, nominative commercial use or even commercial partnership. Respondent maintains that his use of the disputed domain name has been fair, lawful and in good faith, given that while he continues to brainstorm and consider how best to maximize the potential of the disputed domain name he has avoided adding any infringing materials or logos on any website associated with the disputed domain name.
Respondent argues that the disputed domain name is not confusingly similar to Complainant’s REVLIMID mark, as there is no evidence that any consumers have been confused by the disputed domain name. Respondent further argues that Complainant’s claim of possible confusion is based on hypothesis and pure conjecture and not on any facts. Respondent maintains that consumers seeing the disputed domain name will not perceive the disputed domain name, that includes the word “generic”, as connected to Complainant – particularly sophisticated Internet users searching for a generic version of or information about a generic version of Complainant’s REVLIMID pharmaceutical product.
Respondent also asserts that if he had developed a consumer information website he would have included a disclaimer disassociating the website from any trademarked products or services. Respondent maintains that while he originally wanted to use the disputed domain name for a noncommercial fair use, he ultimately decided to sell the disputed domain name due to the intense interest of various pharmaceutical industry officials, including Complainant, in the disputed domain name. Respondent argues that the fact that there has been no website at the disputed domain name does not establish bad faith as the domain name was registered on November 11, 2017 and he did not have a sufficiently reasonable amount of time to budget and allocate funds, conduct market research and the like before being able to launch a viable website.
Respondent further contends that his offer to sell the disputed domain name is not illegitimate given that he was planning to make a noncommercial use of the disputed domain name and that several parties made offers for the disputed domain name. Respondent notes that as a domainer his offer to sell the disputed domain name is lawful and legitimate and that it is not wrong for a business to profit from the sale of a legitimate asset. Respondent argues that Complainant is seeking through the UDRP proceeding to hijack the domain in order to monopolize a niche marketplace in cyberspace and to restrict fair competition, all for the purpose of maintaining hyper inflated drug prices. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. Section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The touchstone, however, is that an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Id. A. Complainant’s Supplemental Filing
As a preliminary issue, the Panel first addresses the admissibility of Complainant’s January 5, 2018 Supplemental Filing.
Under Paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence.
A panel can determine within its sole discretion whether to admit or reject supplemental submissions. See WIPO Overview 3.0 at section 4.6. Many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s Response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of Complainant’s Supplemental Filing or which would require the Panel to allow Respondent to also submit a supplemental filing to address points made by Complainant in its Supplemental Filing. The Panel therefore declines to accept Complainant’s Supplemental Filing. B. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the REVLIMID mark in connection with its pharmaceutical product. Complainant has also provided evidence that the REVLIMID mark has been registered in the United States well before Respondent (who is located in the United States) registered the disputed domain name.
With Complainant’s rights in the REVLIMID mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s REVLIMID mark as it incorporates the REVLIMID mark in its entirety in the disputed domain name. For purposes of this first element, the addition of the word “generic” at the head of the disputed domain name does not distinguish the disputed domain name from Complainant’s REVLIMID mark, as the dominant component of the disputed domain name is REVLIMID. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s REVLIMID mark and in showing that the disputed domain name is confusingly similar to that trademark. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has not made any use of the disputed domain name in connection with a website or web page since registering it on November 8, 2017. The only bona fide evidence before the Panel are communications between Complainant and Respondent concerning the disputed domain name. These communications ultimately resulted in Respondent giving Complainant four business days to accept or reject an offer from Respondent to sell the disputed domain name for USD 10,000, after which Respondent advised it would sell the disputed domain name to another interested party. Although Respondent claims that he registered the disputed domain name for purposes of preventing pharmaceutical companies, such as Complainant, from blocking access to information regarding generic drugs being offered in the marketplace, and for an online noncommercial platform presumably related to such, no evidence was submitted by Respondent supporting that claim. Notably, Respondent admits that he has not formulated any precise plans for such an online noncommercial informational platform, and admits that he has not taken any steps for creating such. While the Panel is mindful that the disputed domain was registered on November 8, 2017 and that not much time passed between the registration of the disputed domain name and the time Complainant sent a demand letter on November 22, 2017, it is telling that Respondent did not submit any evidence regarding his claimed bona fide intention for a noncommercial fair use of the disputed domain name or any evidence of any past practices showing his registration and use of domain names for bona fide noncommercial informational purposes.
Similarly, while Respondent claims that he received multiple offers for the purchase of the disputed domain name from parties in the pharmaceutical industry, Respondent likewise did not provide any evidence regarding such. Thus, on its face, it is questionable whether Respondent indeed received unsolicited offers or was in fact soliciting offers from other parties for the purchase of the disputed domain name. This is notable because there is a tension between Respondent’s claim to have registered the disputed name for a yet to be developed online non-commercial platform and the offer to sell the disputed domain name for USD 10,000. Given the timing it seems implausible that Respondent, in fact, registered the disputed domain name for his claimed noncommercial informational purpose, or to prevent the registration of the disputed domain name by a pharmaceutical company, given that within days after registering the disputed domain name Respondent was trying to sell the disputed domain name to a pharmaceutical company for a large amount in order to profit from such. As the only credible evidence before the Panel is of Respondent’s attempt to sell the disputed domain name for USD 10,000 it appears more likely than not that Respondent registered the disputed domain name solely to profit from the resale of such and not for some nominative fair use or free expression purpose. Indeed, Respondent makes little effort to conceal that fact and admits that he speculates and trades in domain names and that the disputed domain name has value that Respondent should profit from.
The remaining question for the Panel, though, is whether Respondent has a legitimate interest in registering the disputed domain name that consists of the combination of the word “generic” with Complainant’s REVLIMID mark and then seeking to profit from such. That combination in the disputed domain name does not, on its face, immediately suggest sponsorship or endorsement by Complainant, given that the disputed domain name could be seen by consumers as relating to a website providing information on a generic version of Complainant’s REVLIMID pharmaceutical product. While Complainant maintains that the legitimate generic version of REVLIMID is called Lenalidomide, it seems that a domain name consisting of the word “generic” with the name of the branded pharmaceutical product could be understood by some consumers as referring to a generic version of REVLIMID such as Lenalidomide. However, it is also conceivable, as Complainant argues that some consumers could perceive the disputed domain name as relating to Complainant. There are misconceptions amongst some consumers regarding generic pharmaceutical products, the source of such, pricing, and whether a generic version of a branded product will operate in the same way as the branded version. Consequently, some consumers could believe that the disputed domain name that includes the REVLIMID mark relates to Complainant or to an informational page from Complainant regarding generic versions of REVLIMID. For example, the disputed domain name could conceivably be used for purposes of providing information regarding inactive ingredients of a generic alternative to REVLIMID and the possible allergies or sensitivities that could be encountered from using such. Simply put, the disputed domain name does not in and of itself trigger a definitive inference of affiliation or non-affiliation and is not the equivalent of a domain name that in and of itself has both a branded meaning and a generic meaning (see, e.g., WIPO Overview 3.0 at section 2.10). Consequently, the disputed domain name needs to be assessed in the context of the use that has been made of such by Respondent.
Here, and as already noted above, the only actual evidence before the Panel, as opposed to unsubstantiated statements, is Respondent’s attempts to sell the disputed domain name to Complainant for USD 10,000 shortly after registering it. In attempting to justify his actions, Respondent makes various general statements regarding pharmaceutical companies, hyper-inflated drug prices and alleged attempts by pharmaceutical companies to block generic drugs from being offered by the public. These statements, however, concern topics that are well beyond the limited scope of a UDRP proceeding and do not address Respondent’s own actions in regards to the disputed domain name that is at issue in this proceeding.
Respondent also argues that this proceeding is being used by Complainant to stifle his free speech expression as the registrant of the disputed domain name. In support of that claim, Respondent relies on MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. DCC2014-0002. However, a review of that case makes clear that the underlying factual situation was completely different from the factual situation presented by the evidence in this case. MUFG Union Bank, N.A. v. William Bookout concerned the registration and use of disputed domain names that included a complainant’s mark in connection with an actual bona fide noncommercial criticism website. Here, in contrast, there has been no use of the disputed domain name for an actual bona fide noncommercial informational platform. While Respondent claims that he was planning to use the disputed domain name for such, there is no evidence showing that this was the case, or that Respondent made preparations for such, or that Respondent ever developed and/or operated a noncommercial informational website. Given that Respondent registered the disputed domain name and very quickly thereafter simply sought to sell the disputed domain name for a large sum of money, make it more likely than not that Respondent registered the disputed domain that consists of Complainant’s mark for the commercial purpose of selling the disputed domain name to the highest bidder, and that the claim of registering the disputed domain name for a future noncommercial online informational platform is pretextual. Perhaps Respondent has evidence in his control that would prove otherwise, but what has been submitted in this proceeding simply does not support the unsubstantiated claims made by Respondent.
Given that Complainant has established with sufficient evidence that it owns rights in the REVLIMID mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the present case, Respondent was clearly aware of Complainant when Respondent registered the disputed domain name, given that the disputed domain name fully incorporates the REVLIMID mark, and given Respondent’s assertion that he registered the disputed domain name for purposes of preventing pharmaceutical companies such as Complainant from blocking access to information regarding drugs being offered in the market place. Given this awareness, Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith. The evidence before the Panel shows that Respondent registered the disputed domain name and then simply sought to sell it to Complainant for USD 10,000. Although Respondent asserts First Amendment rights and freedom of expression, and claims that the disputed domain name was registered for a future noncommercial informational platform, these contentions, as already noted, appear to be pretextual. Respondent did not provide any bona fide evidence supporting these contentions or showing that any preparations for such use had ever been undertaken or that Respondent had ever created or operated a noncommercial informational platform. Simply put, the evidence before the Panel, makes its more likely than not that Respondent registered the disputed domain name that incorporates Complainant’s REVLIMID mark simply to profit from its possible association with Complainant or Complainant’s REVLIMID pharmaceutical product and not for some fair use or free speech purpose.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: January 24, 2018
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