The Complainant is Celgene Corporation, United States of America (“United States”), represented by Cozen O'Connor, United States.
The Respondent is Christin Nadel, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant, 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 October 25, 2019. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on December 6, 2019. 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 biopharmaceutical company. It offers lenalidomide, a product indicated for the treatment of multiple myeloma cancer and myelodysplatic syndromes. The Complainant markets its version of lenalidomide under the trademark REVLIMID and is the exclusive distributor of REVLIMID. The Complainant owns trademark registrations for REVLIMID including United States trademark registration number 2,925,808, registered on February 8, 2005, and International registration number 943486, registered on November 14, 2007, designating multiple jurisdictions, including China. Both those trademark registrations specify pharmaceutical preparations, namely cytokine inhibitory drugs; pharmaceutical preparations that modulate the immune system in international class 5, and both remain current. The Respondent is ostensibly an individual resident in Germany but her mobile phone contact number is a United States number. Her identity and contact information are not available in the Registrar’s public WhoIs database. Her contact information is available in the Registrar’s private WhoIs database but it is evidently incorrect, as a result of which the Written Notice of the Complaint could not be delivered by courier. The disputed domain name was created on January 31, 2019. It does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s REVLIMID trademark. The disputed domain name prominently and wholly incorporates that trademark. The mere addition of the descriptor “generic” fails to distinguish and, in fact, increases the likelihood of confusion amongst consumers as to the source of the disputed domain name and associated website. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is the exclusive distributor of REVLIMID, which is only distributed through a restrictive distribution program. There is no legitimate interest in the Respondent’s unauthorized registration of the Complainant’s brand name when it could register an International Nonproprietary Name (“INN”) and generic name of the drug to avoid a likelihood of confusion rather than registering a domain as a generic form of REVLIMID, which is false on its face as there is no generic form of REVLIMID. The Respondent’s purpose in registering and using the disputed domain name is an apparent attempt to siphon off the Complainant’s goodwill in its REVLIMID marks. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name long after the Complainant began advertising and selling its REVLIMID products and obtaining registrations for its REVLIMID trademarks. Third parties can use a generic drug name to distinguish themselves from the Complainant’s REVLIMID brand name and allow consumers to know when a drug is being offered from a different source, but the Respondent did not want to distinguish itself from the Complainant and appears to intend to trade off the Complainant’s goodwill in its REVLIMID mark. Looking at the totality of factors in this case leads to the finding of bad faith due to the degree of distinctiveness or reputation of the Complainant’s REVLIMID mark, the Respondent’s concealing its identity, and the implausibility of any good faith in which the Respondent registered or would use this disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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 Based on the evidence submitted, the Panel finds that the Complainant has rights in the REVLIMID trademark. The disputed domain name wholly incorporates the REVLIMID mark as its only distinctive element. The disputed domain name also includes the dictionary word “generic” and a hyphen between that word and the trademark. As a mere dictionary word and punctuation that serves to make the trademark even easier to recognize, these elements do not dispel the confusing similarity between the disputed domain name and the trademark. The REVLIMID trademark remains clearly recognizable within the disputed domain name. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, specifically, “.com”, which is a technical requirement of registration. A gTLD suffix is disregarded in the comparison of a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name is passively held. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Registrar’s verification email indicates that the Respondent’s name is “Christin Nadel”, not “generic-revlimid” or even “revlimid”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the circumstances of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the Panel observes that the disputed domain name was registered years after the Complainant obtained its trademark registration for REVLIMID, including in China, where the Respondent is located. The disputed domain name wholly incorporates the REVLIMID trademark. The disputed domain name also incorporates the word “generic”, which can refer to a pharmaceutical product marketed under a non-proprietary name. The combination of that word with the REVLIMID trademark indicates an awareness that REVLIMID is used in connection with a pharmaceutical product, even though REVLIMID itself is not a generic pharmaceutical product. The clear inference is that the Respondent targeted the Complainant’s REVLIMID trademark at the time that she registered the disputed domain name. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith. With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the disputed domain name combines the word “generic”, which can refer to a pharmaceutical product marketed under a non-proprietary name, with the pharmaceutical trademark REVLIMID, which is a proprietary name. The most likely explanation is that the disputed domain name is intended to be used in such a way as to take advantage of the reputation that the Complainant has acquired in its trademark to attract Internet users to a site that could offer a generic competitor pharmaceutical product, although the disputed domain name does not yet resolve to such a site. Further, the Respondent has provided incorrect contact information in the Registrar’s WhoIs database which indicates an attempt to conceal her whereabouts and is a further indicator of bad faith. In view of these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: December 18, 2019
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