Celgene Corporation v. Chen
Shenglu
Claim Number: FA0802001143732
PARTIES
Complainant is Celgene Corporation, (“Complainant”) represented by Camille M. Miller, of Cozen
O'Connor, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <revlimid.us>, registered with Direct
Information Pvt Ltd d/b/a Publicdomainregistry.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 8, 2008;
the Forum received a hard copy of the Complaint on February 11, 2008.
On February 12, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry
confirmed by e-mail to the Forum that the <revlimid.us> domain name is registered with Direct
Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is
the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry
has verified that Respondent is bound by the Direct
Information Pvt Ltd d/b/a Publicdomainregistry registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On February 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 17, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On march 26, 2008 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <revlimid.us> domain name is identical to Complainant’s REVLIMID mark.
2.
Respondent does not have any rights or
legitimate interests in the <revlimid.us>
domain name.
3.
Respondent registered and used the <revlimid.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Celgene
Corporation, has registered the REVLIMID mark with the United States Patent and
Trademark Office (“USPTO”) several times over in connection with
pharmaceuticals. The earliest
registration being for Reg. No. 2,925,808, issued Feb. 8, 2005. Complainant’s REVLIMID drug is the subject of
extensive promotional campaigns and, in 2007, net sales of Complainant’s REVLIMID
drug totaled $773.9 million.
Complainant owns and operates websites at the <revlimid.com>,
<revlimid.net>, <revlimid.mobi>, <revlimid.org>,
<revlimid.info>, and <revlimid.us.com> domain names.
Complainant’s REVLIMID drug
is subject to restricted distribution and the use of the <revlimid.us> domain name by an owner other than Complainant,
which resulted in consumer confusion, has the potential for serious health
consequences for consumers.
Complainant contacted Respondent on July 18,
2006 regarding Respondent’s registration of the <revlimid.eu> domain
name. Complainant and Respondent came to
an agreement to transfer the <revlimid.eu> domain name from Respondent to
Complainant.
Respondent registered the <revlimid.us> domain name on July
21, 2006, three days after having been contacted by Complainant regarding the
<revlimid.eu> domain name. The
disputed domain name currently resolves to a parked page and was likely
registered to be sold or transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the REVLIMID mark under Policy ¶ 4(a)(i) through multiple registrations with the USPTO and extensive use. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of [UDRP] ¶ 4(a)(i).”).
Moreover, the disputed domain name is
identical to Complainant’s mark under Policy ¶ 4(a)(i). The <revlimid.us> domain name differs from Complainant’s REVLIMID mark only in the inclusion
of the “.us” country-code top-level domain (“ccTLD”). As a top-level domain is required of all
domain names, the Panel finds this addition is not relevant in a discussion of
similarity under Policy ¶ 4(a)(i). See Basic Trademark S.A. v. Antares S.p.A,
FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain
name is identical to the ROBE DI KAPPA mark.
The only difference is the omission of the space between the words and
the addition of the ccTLD “.us,” which does not significantly distinguish the
domain name from the mark.”); see also Lifetouch,
Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005)
(finding the respondent’s <lifetouch.us> domain name to be identical to
the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark
fails to distinguish the domain name from the mark pursuant to the Policy”).
The Panel finds Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must
first establish a prima facie case
that Respondent has no rights or legitimate interests in the disputed domain
name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb.
Forum Jan. 13, 2001) (finding that even when the respondent does not file a
response, the complainant must allege facts, which if true, would establish
that the respondent does not have any rights or legitimate interests in the
disputed domain name). The Panel finds that Complainant has
established a prima facie case and
that the burden is thus shifted to Respondent to show that it does have rights
or a legitimate interest in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
No Response has
been submitted to the Complaint.
Therefore, the Panel presumes that Respondent has no rights or
legitimate interests in the <revlimid.us>
domain name; however, the Panel will still examine the record in consideration
of the factors listed under Policy ¶ 4(c). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant); see also Law Soc’y of Hong
Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A
respondent is not obligated to participate in a domain name dispute . . . but
the failure to participate leaves a respondent vulnerable to the inferences
that flow naturally from the assertions of the complainant and the tribunal
will accept as established assertions by the complainant that are not
unreasonable.”).
Complainant contends Respondent has no trademark or service mark identical to the <revlimid.us> domain name. Absent evidence suggesting otherwise, the Panel finds that Respondent has no trademark or service mark rights in the REVLIMID mark, which would satisfy Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The record fails to indicate Respondent ever
was or currently is commonly known by the disputed domain name. The Panel finds Respondent has no rights or
legitimate interests pursuant to Policy ¶ 4(c)(iii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under [UDRP] ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that the disputed domain
name currently resolves to a parked web page.
The Panel finds Respondent’s use to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iv). See Bank
of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(finding that the respondent’s use of a domain name to redirect Internet users
to websites unrelated to a complainant’s mark is not a bona fide use
under [UDRP] ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd.,
FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use
of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to
respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services
pursuant to [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to [UDRP] ¶ 4(c)(iii)); see also
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001)
(stating that the respondent’s use of the complainant’s entire mark in domain
names makes it difficult to infer a legitimate use).
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends, and Respondent does not
deny, that Respondent has been on actual notice of Complainant’s rights in the
REVLIMID mark since at least as early as July 18, 2006, when Complainant
contacted Respondent in regard to Respondent’s registration of the
<revlimid.eu> domain name. The
Panel finds Respondent’s actual knowledge of Complainant’s rights in the REVLIMID
mark as evidence of bad faith registration under Policy ¶ 4(a)(iii). See Deep
Foods, Inc. v. Jamruke,
LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while
mere constructive knowledge is insufficient to support a finding of bad faith,
where the circumstances indicate that the respondent had actual knowledge of
the complainant’s mark when it registered the domain name, panels can find bad
faith); see also Yahoo! Inc. v.
The Panel also finds Respondent has engaged
in a pattern of registering domain names identical to Complainant’s REVLIMID
mark. Complainant contends, and
Respondent does not deny, that prior to the current dispute, Complainant and
Respondent had already discussed Respondent’s registration of the
<revlimid.eu> domain name and come to the resolution that it should be
transferred to Complainant. The Panel
finds Respondent’s registrations of two domain names comprising Complainant’s
mark establish a pattern that Respondent is acting in bad faith pursuant to
Policy ¶ 4(b)(ii).
See Philip Morris
Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s previous registration of domain names such as
<pillsbury.net>, <schlitz.net>, <biltmore.net> and
<honeywell.net> and subsequent registration of the disputed
<Marlboro.com> domain name evidenced bad faith registration and use
pursuant to UDRP ¶ 4(b)(ii)); see also YAHOO! INC v. Syrynx,
Inc., D2000-1675 (WIPO
Jan. 30, 2001) (finding a bad faith pattern pursuant to UDRP ¶ 4(b)(ii) in the
respondent's registration of two domain names incorporating the complainant's
YAHOO! mark); see also EPA
European Pressphoto Agency B.V. v.
The Panel finds the disputed domain name likely to cause confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the resulting web site. Respondent is presumed to be commercially benefiting from the <revlimid.us> domain name for each misdirected Internet user to a third-party website through the use of click-through fees. The Panel finds this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv)).
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(ii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <revlimid.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 4, 2008
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