Complainant is Celgene Corporation, United States of America (“United States”), represented by Cozen O'Connor, United States.
Respondent is Celgene International Inc., United States / Rose Colen, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 21, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 3, 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 Respondent of the Complaint, and the proceedings commenced on December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2019. The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 2, 2020. 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 is an integrated global biopharmaceutical company engaged in the discovery, development, and commercialization of novel therapies for the treatment of cancer and inflammatory diseases through gene and protein regulation. Complainant is one of the largest biotechnology companies in the world with a market capitalization of over USD 78 billion as of November 18, 2019. Many of Complainant’s pharmaceutical products have been approved by the United States Food and Drug Administration for the treatment of cancer, blood disease, and other severe immune and inflammatory conditions. For over 30 years Complainant has continuously used the CELGENE trademark in connection with its pharmaceutical products and services. Complainant has filed multiple trademark applications for various CELGENE marks in jurisdictions throughout the world. These registrations include the following: - U.S. Reg. No. 2,379,836 for CELGENE for “pharmaceutical preparations for use in the treatment of immunological, inflammatory and neurological disorders” in International Class 5, first used September 29, 1998, incontestable and conclusively presumed valid and enforceable. - U.S. Reg. No. 2,888,517 for CELGENE in International Classes 1, 5, 40, 41, and 42, first used December 31, 1986, incontestable and conclusively presumed valid and enforceable. - U.S. Reg. No. 4,250,217 for C CELGENE & Design in International Classes 5, 35, 41, 42, and 44, first used in International Class 5 as early as September 29, 1998, in International Classes 35, 41, and 42 as early as 1986, and in International Class 44 at least as early as June 28, 2001. Complainant has continuously operated a website at “www.celgene.com” promoting Complainant’s pharmaceutical products and services for more than 20 years. The Domain Name was registered on January 15, 2019. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant contends that the Domain Name incorporates Complainant’s federally registered CELGENE mark in a manner that is confusingly similar to a trademark in which Complainant has established rights and is diluting the same. Complainant states that as a result of Complainant’s marketing and promotional efforts and the quality of Complainant’s products, the CELGENE mark and pharmaceutical products and services have become well known and famous throughout the pharmaceutical industry and in the minds of the public. The success of the CELGENE brand in connection with Complainant’s pharmaceutical products, drug delivery compounds, research and related goods and services is due in part to Complainant’s marketing and promotional efforts, including advertising and promotion through Complainant’s various websites, including its flagship website located at “www.celgene.com”, and through print and other Internet-based advertising. Complainant’s website provides information to the public about the CELGENE pharmaceutical products, drugs, research, and important safety information and treatment resources. Complainant claims the CELGENE brand achieved widespread consumer recognition and was well-known well before Respondent registered the Domain Name. In particular, Complainant states it has used its CELGENE mark, sold its CELGENE pharmaceutical products in commerce, published trademark applications for the CELGENE mark, and garnered significant brand awareness in the worldwide pharmaceutical marketplace long before Respondent registered the Domain Name on January 15, 2019. Complainant has continued to use, register, and globally expand its rights in the CELGENE brand since it first commenced use of the CELGENE mark in 1986. The Domain Name’s registration post-dates by many years Complainant’s registration and use of its CELGENE marks. Given Complainant’s extensive, exclusive, and substantial use of the CELGENE mark, Complainant claims that Respondent had knowledge of these rights prior to registering the Domain Name. Complainant states the Domain Name is confusingly similar to Complainant’s CELGENE mark and also constitutes dilution by blurring and tarnishment, to Complainant’s detriment. Because Complainant owns the famous CELGENE mark, Complainant states it is further protected against the dilution of the distinctiveness of its mark and the Domain Name is diluting the famous CELGENE mark and needs to be enjoined. The Domain Name wholly incorporates Complainant’s CELGENE mark, which is the first and dominant term in the Domain Name, increasing the likelihood of consumer confusion and infringing on Complainant’s rights in its registered CELGENE mark. Complainant states that while the Domain Name also includes the descriptor “international”, the addition of this term to Complainant’s CELGENE mark fails to distinguish, and in fact increases, the likelihood of confusion amongst consumers as to the source of the Domain Name and associated website. The fact that Complainant is an international brand with trademark registrations worldwide for the CELGENE mark further increases the likelihood of confusion that the Domain Name is in some way connected with Complainant’s international brand. Consumers who visit the website linked to the Domain Name are likely to have the false belief that the website is owned and operated by Complainant or is otherwise associated with, sponsored, and/or endorsed by, Complainant, when that is not the case. (ii) Rights or legitimate interests Complainant asserts that Respondent has not provided any legitimate basis for its registration of the Domain Name. Respondent is not affiliated with Complainant, and Respondent is perpetrating a fraud, which is discussed below. Using a domain name for apparently illegal activities cannot be the basis of rights or legitimate interests. Additionally, Complainant claims Respondent has anonymously registered the Domain Name in an effort to evade theconsequences of registering a Domain Name for which Respondent has no rights or legitimate interests. The use of a privacy or proxy registration service to register a domain name hasled numerous panels to take the registrant’s anonymity into account and draw adverseinferences. Complainant states that since Respondent has not provided a legitimate basis for its registration of the Domain Name despite multiple correspondence sent by Complainant to Respondent. In addition, Complainant maintains that the entirety of the evidence demonstrates Respondent’s illegitimate purpose in registering and using the Domain Name, including Respondent’s use of privacy/proxy registration services to make contacting the registrant more difficult, and Respondent using the website associated with the Domain Name fraudulently to syphon off of the reputation and goodwill that Complainant has established in its CELGENE marks. (iii) Registered and used in bad faith Complainant contends that Respondent’s adoption and use of the Domain Name is in bad faith, has continued with full knowledge of Complainant’s prior rights given the affirmative notice provided by Complainant, and is in willful infringement of Complainant’s prior rights. Respondent has attempted to take commercial advantage of Complainant’s trademarks and commercial reputation and to trade off Complainant’s goodwill. Complainant states that the Policy expressly provides in paragraph 4(b) that bad faith may be found where “the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor”; and/or “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.” Policy, paragraphs 4(b)(iii) and (iv). Here, Complainant claims that Respondent’s bad faith actions are extensive and perpetrating fraud. Respondent’s registration and use of the Domain Name was, and is, in bad faith in contravention of paragraphs 4(b)(iii) and (iv) of the Policy. Respondent registered the Domain Name and created the associated website long after Complainant began advertising and selling its CELGENE products and obtaining registrations for its CELGENE trademarks. The Domain Name was created on January 15, 2019, which post-dates by many years Complainant’s registration and use of the CELGENE marks, but immediately followed the January 3, 2019 press release by Bristol-Myers Squibb that announced plans that it would acquire Complainant in a cash and stock transaction with an equity value of approximately USD 74 billion. Respondent states on the website at the Domain Name that it was founded in 1971, but waited until less than two weeks after a USD 74 billion transaction to register the Domain Name, which shows Respondent’s intent to trade off of the goodwill of Complainant. Moreover, it is apparent from the screenshots of the site linked to Respondent’s Domain Name that Respondent registered the Domain Name and created the associated site solely to trade off of Complainant’s goodwill in its CELGENE marks and to confuse consumers into believing that Respondent’s website is affiliated or associated with Complainant, when that is not the case. The screenshots show that Respondent uses multiple uses of “Celgene” on its webpage and has its contact information listed with “[…]” as the president. “[…]”, the same exact name used by Respondent, served as an employee, chairman of the board of directors, and CEO at Complainant for many years. Respondent is purposefully perpetuating consumer fraud by holding itself out as being affiliated or associated with Complainant or its CELGENE product and registering the Domain Name to create an illusion that Respondent and its site are sponsored or endorsed by, or otherwise affiliated or associated with, Complainant, when that was not the case. Complainant contends such actions reek of bad faith intent, as to the initial registration of the Domain Name and its use. Complainant maintains that Respondent intentionally infringed Complainant’s trademark rights by not only registering a Domain Name that wholly incorporates Complainant’s CELGENE mark, but also by creating a website where Respondent falsely represents that its president is the same as the former CEO of Complainant to further syphon the goodwill established by Complainant. These unauthorized actions create initial interest confusion, divert profits away from Complainant, create fraud against consumers, and demonstrate Respondent’s illegitimate purpose in registering and using the Domain Name. Further, these actions constitute trademark infringement, dilution, and unfair competition in violation of the United States Lanham Act and other state and federal laws. Such infringing activity strongly suggests bad faith. Complainant states that as soon as Complainant learned of Respondent’s bad actions, it had its counsel send a letter to the address listed for Respondent’s Domain Name. On February 19, 2019, Complainant sent Respondent a letter in which it notified Respondent of Complainant’s rights in the CELGENE trademark and requested that Respondent transfer the Domain Name to Complainant. On March 5, 2015, and March 20, 2015, Complainant sent Respondent follow up letters. Complainant states that Respondent ignored all of Complainant’s letters, which further suggests bad faith. Complainant contends that Respondent registered the Domain Name to confuse and divert customers and trade off of the famous CELGENE mark for commercial gain and to profit from the resulting consumer confusion. Such registration and use of the Domain Name is in itself a form of opportunistic bad faith. Accordingly, Complainant urges that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s trademark and it is clear that this Domain Name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its well-known CELGENE trademark, based on its trademark registrations and use of the mark in connection with its biopharmaceutical business. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”) Further, the Panel determines that the Domain Name is identical or confusingly similar to the CELGENE mark, as the Domain Name incorporates the mark in its entirety, while adding the term “international”. The addition of this term would not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); see Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 (the mere addition of a descriptor “travel” does not serve to distinguish, for Policy purposes, the disputed domain name Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its CELGENE trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the record in this case indicates that the Domain Name has been used to resolve to what appears to be a sham website attempting to perpetrate a fraud. The site claims that “Celgene International & Trust Company, LLC (CGI) is a full-service, tech-enabled professional services firm”. This purported company claims to have been created in 1971, yet the Domain Name was registered only recently in January 2019, shortly after the January 3, 2019 press release by Bristol-Myers Squibb, announcing plans that it would acquire Complainant. Further, on the “Contact Us” page for the website, reference is made to “[…]” as president. This name is identical to the name of Complainant’s former CEO and chairman of its board of directors for many years. Many of the links on Respondent’s website do not work, while certain webpages refer to individuals who are claimed to hold positions with Respondent, but actually work for other non-related companies. Respondent, even assuming it was a real company, has had the opportunity to respond to the letters sent by Complainant’s counsel prior to the filing of the Complaint, as well as to the notices sent by the Center after this case was filed. However, there has been no communication or reply received from Respondent. Under these circumstances, Respondent’s use of a privacy service to anonymously register the Domain Name also gives rise to drawing an inference against Respondent. Respondent’s use of the Domain Name in this apparently fraudulent manner does not give rise to any right or legitimate interest in it. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, it appears that Respondent was aware of Complainant and its well-known CELGENE mark, and intentionally targeted that mark, when registering the Domain Name. The Domain Name incorporates Complainant’s well-known CELGENE trademark in its entirety, along with the descriptive word “international”. At the time of registration, Complainant’s CELGENE mark had been in use in the United States for more than 30 years. Further, the Domain Name’s registration came shortly after Bristol-Myers Squibb’s January 3, 2019 press release, announcing plans that it would acquire Complainant. Given the fame of the CELGENE trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, and that Respondent makes reference to Complainant’s former CEO and chairman on Respondent’s bogus website, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its CELEGENE mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, (…) its very use by someone with no connection with the products suggests opportunistic bad faith”). This point is confirmed by Respondent’s use of the Domain Name in connection to a website that appears to be attempting to perpetrate a fraud, as described above. The company, “Celgene International & Trust Company, LLC”, does not appear to exist, nor does it employ Complainant’s former CEO and chairman. Respondent used a privacy service to anonymously register the Domain Name, which in the circumstances also gives rise to drawing an inference against Respondent. In these circumstances, it is clear that the Domain Name has been registered in bad faith and for the purpose of intentionally attempting to mislead members of the public in order to commit fraud. Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the CELGENE trademark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the website to which it resolves. See e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (respondent registered complainant's well-known trademark as a domain name with only a minor alteration, raising the preliminary assumption that the domain name had been registered for some illegitimate purpose, and the evidence showed that the respondent had been using the domain name to perpetrate a fraud by pretending that it is the complainant and creating false emails pretending that they are genuine emails coming from the complainant and one of its senior executives). In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third 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 Domain Name Christopher S. Gibson
Sole Panelist
Date: January 13, 2019
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