Cellgene.com : UDRP panel finds Complainant guilty of Reverse #Domain Name Hijacking

The UDRP against the domain Cellgene.com ended with a finding of Reverse Domain Name Hijacking.

The Complainant in this case, Celgene Corporation of Summit, New Jersey, touted their 13 billion USD revenue in 2017 to signify its size and status.

And yet, their approach to wrestle the domain away from its registrant failed, for a couple of reasons.

The UDRP panel ignored the Complainant’s PPC ad angle, understanding that these are controlled by the upstream provider.

“In any case, the Panel does not believe these PPC links are relevant given that they first appeared after a very long period of entirely legitimate PPC-use of the disputed domain name by the Respondent. Even if the Respondent is treated as responsible for these (automated) links and even if they are deemed to constitute use in bad faith (as to which the Panel expresses no view), they are certainly not indicators that the Respondent registered the disputed domain name in bad faith 15 years previously.”

Also, negotiations involved an offer of $2,000 dollars by the Complainant that was countered with $7,500 dollars; the Complainant argued that the asking price was exuberant. The offer was, nonetheless, unsolicited to begin with: the Respondent didn’t initiate contact to sell the domain name.

The decision to deny transfer of the domain Cellgene.com to the Complainant marks the 4th UDRP case and the 2nd with a RDNH finding that ESQwire.com wins in the last 4 weeks.

Note: ESQwire is a premium sponsor of DomainGang.com.

Full details of this decision follow:

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Celgene Corporation v. PRIVACYDOTLINK Customer 3639471 / Domain Administrator, Portmedia Holdings Ltd
Case No. D2018-2673

1. The Parties

The Complainant is Celgene Corporation of Summit, New Jersey, United States of America (“United States”), represented by Cozen O’Connor, United States.

The Respondent is PRIVACYDOTLINK Customer 3639471 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Domain Administrator, Portmedia Holdings Ltd of Hong Kong, China, represented by ESQwire.com PC, United States.

2. The Domain Name and Registrar

The disputed domain name <cellgene.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2018 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 November 26, 2018.

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 November 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2018. On December 18, 2018, the Respondent contacted the Center granted the Respondent’s request for an automatic four-day extension for the Response under paragraph 5(b) of the Rules. The Response was filed with the Center on December 21, 2018.

The Center appointed Adam Taylor, Joseph Simone, and The Hon Neil Brown Q.C. as panelists in this matter on January 16, 2019. The Panel finds that it was properly constituted. Each member of the Panel submitted a 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 pharmaceutical company, which has traded under the name “Celgene” for some 30 years. It has 36 offices and 7,500 employees worldwide. Its total revenue in 2017 was some USD 13 billion.

The Complainant owns the following United States trade mark registrations for CELGENE:

– No. 2,379,836, filed January 21, 1997, registered August 22, 2000, in class 5; and
– No. 2,888,517, filed May 19, 2003, registered September 28, 2004, in classes 1, 5, 40, 41, and 42.

The Complainant has operated its own website at “www.celgene.com” for some 15 years.

The Respondent registered the disputed domain name on March 16, 2003.

On September 11, 2018, CSC Digital Brand Services (“CSC”) emailed the Respondent stating that it was interested in buying the disputed domain name. The Respondent responded the same day stating that it acted for the owner of the disputed domain name and that its client would be willing to sell for USD 7,500.

As of November 19, 2018, the disputed domain name resolved to a pay-per-click (“PPC”) landing page with the following links: “Celgene Jobs” (appears twice), “Celgene”, “Jobs Now Hiring”, and “Career Jobs Hiring”.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The Complainant is one of the largest biotechnology companies in the world.

The Complainant’s well-known and famous CELGENE trade marks have achieved significant recognition in the marketplace in connection with the Complainant’s goods and services, since before the Respondent registered the disputed domain name.

The great success of the Complainant’s brand is due in part to its marketing and promotional efforts including via its own website.

The Complainant has successfully obtained transfer of various domain names via previous UDRP proceedings.

The disputed domain name is confusingly similar to the Complainant’s trade mark, simply incorporating an additional letter “L”. The disputed domain name is identical in appearance, and completely identical in sound, to the Complainant’s trade mark. Consumers who discover it, including through misspelling, are likely to mistakenly conclude that the disputed domain name is associated with the Complainant.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not affiliated with the Complainant and the Complainant has not authorised it to use the Complainant’s mark.

Because the Respondent registered the disputed domain name anonymously and because there is no contact information on its website, the Respondent cannot claim to have been commonly known by the disputed domain name.

The Respondent has solely used the disputed domain name for a “link farm”, designed to lure Internet users by virtue of the similarity of the disputed domain name to the Complainant’s mark and divert them to other commercial sites. This is not a bona fide offering of goods or services.

Moreover, some of the links appear to point to the Complainant and its services but do not lead to any legitimate website or information about the Complainant.

The Respondent registered and used the disputed domain name in bad faith.

An Internet user seeking the Complainant’s goods and services, perhaps mistakenly given the closeness in spelling, is directed to the Respondent’s website, which includes links with headings that not only use the Complainant’s trade marks but falsely promote information about the Complainant that can be found on its legitimate website, e.g., in relation to career opportunities. Moreover, clicking on the links could expose the user to malware. The foregoing is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

Further, the Complainant made a reasonable offer of USD 2,000 for the disputed domain name when it became aware in 2018 that the Respondent had listed it for sale. The Respondent’s counteroffer to sell for USD 7,500, which is “much more than what the domain should be sold for”, is evidence of a bad faith offer for sale under paragraph 4(b)(i) of the Policy. It is highly likely that the Respondent significantly increased the price when it found out that the Complainant was interested in the disputed domain name.

B. Respondent

The following is a summary of the Respondent’s contentions:

The Respondent bought the disputed domain name on backorder in 2003 because the combination of “cell” and “gene” made it an inherently valuable descriptive domain name.

The combined use of terms “cell” and “gene” in connection with “cell gene therapy” was already in widespread use at that time. Accordingly, the combination is not unique to the Complainant, which in any event does not use the correct spelling of those words in its name.

The Respondent was unaware of the Complainant’s trade mark when it bought the disputed domain name.

The Respondent owns thousands of generic dictionary common word domain names, some of which include the terms “cell” or “gene”.

The Respondent has used the disputed domain name in conjunction with a number of different domain name parking services over the past 15 years. Generally, the advertising links were descriptive, relating to general interest topics. The links were auto-generated by a third-party provider and are constantly changing.

The recent links which appeared to relate to the Complainant were not intentionally placed with the Complainant’s trade mark in mind but were due to changes in parking systems. These links were related to “job searching” generally, not “set” to Complainant. In any case, they were immediately rectified as soon as they were brought to the attention of the Respondent, which had not been aware of them. Such links were de minimis compared to the Respondent’s good faith use since 2003.
The Respondent does not dispute that the Complainant has rights in a trade mark which is identical or confusingly similar to the disputed domain name.

The Respondent possess rights and legitimate interests in the disputed domain name.

The Respondent registered and used the disputed domain name consisting of generic or descriptive words to profit from the generic value of the term and without intending to take advantage of the Complainant’s rights. This constitutes a legitimate interest on the part of the Respondent. That fact that the Respondent knew that the disputed domain name had previously been owned by someone else supports the Respondent’s case for legitimacy.

The Respondent’s registration of the disputed domain name on the grounds of its commercial value as a descriptive or generic domain name constitutes a legitimate interest. This is supported by the pattern of the Respondent’s other descriptive domain names which incorporate the terms “cell” or “gene”.

The Respondent’s use of the disputed domain name in connection with bona fide advertising services, using third party auto-generated links, which were selected as result of the generic or descriptive meaning of terms in the disputed domain name, constitutes a further legitimate interest.

The Complainant has not demonstrated that the disputed domain name was registered or used in bad faith, given the Respondent’s lack of knowledge of the Complainant and the Respondent’s pattern of registering generic and descriptive domain names.

Offering generic and descriptive domain names for sale does not constitute bad faith. There is no evidence that the Respondent registered the disputed domain name for sale to the Complainant other than for its inherent value as a generic or descriptive domain name. Rather, the evidence suggests otherwise.

Nor does the Respondent’s proposal of a price of USD 7,500, in response to an unsolicited approach which concealed the Complainant’s identity, amount to bad faith. This is not evidence that the Respondent registered the disputed domain name because of the value of the Complainant’s trade mark. In these circumstances, the amount sought for the disputed domain name is irrelevant.

The Complainant’s unexplained 15-year delay in acting raises the inference that the Complainant did not truly believe that the disputed domain name was registered or used in bad faith.

The Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”).

The Complainant’s counsel knew or should have known that there was no basis for this claim.

Having taken no action for 15 years, the Complainant rushed to launch this case based on misleading claims as a “Plan B” after the failure of its unsolicited and masked offer to purchase the disputed domain name.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

– the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
– the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
– the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the mark CELGENE by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name. The disputed domain name, which simply contains an extra “L”, is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In view of the Panel’s conclusion under the third element below, the Panel refrains from extensive discussion of the second element as doing so is not necessary for a decision to be reached, and, in any case, the issues overlap somewhat with those under the third element.

However, the Panel observes that the Complainant would have failed on this aspect also.

According to the evidence placed before the Panel, for most of its 16-year life the disputed domain name has been used as a parking page with PPC links relating to the dictionary meaning of the terms comprised in the disputed domain name. As mentioned in section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), such activity is consistent with Respondent rights or legitimate interests under the UDRP.

The Panel does not consider that, in the circumstances explained in section 6C below, the recent and brief appearance of the Complainant-related PPC links is sufficient to delegitimise the Respondent’s use.

C. Registered and Used in Bad Faith

For the following reasons, the Complainant has failed to satisfy the Panel that the Respondent was likely to have been aware of the Complainant on acquisition of the disputed domain name in 2003.

First, the Panel has been given no reason to doubt the Respondent’s assertion that it registered the disputed domain name because it consisted of two generic terms, “cell” and “gene”. The Respondent has established that these terms are not infrequently used in conjunction with each other in the context of the related concepts of “cell therapy” and “gene therapy”.

Second, while the Complainant refers to the disputed domain name as a “misspelling” of the Complainant’s mark, this is not one of those cases where a domain name is explicable only as a misspelling of a complainant’s trade mark. As mentioned above, the disputed domain name comprises the correct spelling of two dictionary terms. Furthermore, there is no evidence before the Panel indicating that the Respondent has engaged in a pattern of typosquatting activity.

Third, the disputed domain name falls within a legitimate pattern of domain names owned by the Respondent which incorporate one or other of the generic terms “cell” and “gene” including <celldesigns.com>, <cellzone.com>, <popcell.com>, <findgene.com>, <genehealth.com>, and <genevoice.com>.

Fourth, while the Complainant has demonstrated that its name and trade mark CELGENE is now widely known, there is no evidence as to the extent of its reputation back in 2003, when the disputed domain name was registered.

Fifth, since at least 2004, the disputed domain name has been used for a website with PPC links relating to the dictionary meaning of the terms comprised in the disputed domain name rather than to the Complainant or its specific industry – apart from a 2018 screenshot produced by the Complainant with three links referring to the Complainant – “Cellgene Jobs” (twice) and “Celgene”. The Complainant has not exhibited the pages to which these links lead and so the Panel cannot tell whether the Complainant is right to claim that they “do not lead to any legitimate website or information about the Complainant”. In any case, the Panel does not believe these PPC links are relevant given that they first appeared after a very long period of entirely legitimate PPC-use of the disputed domain name by the Respondent. Even if the Respondent is treated as responsible for these (automated) links and even if they are deemed to constitute use in bad faith (as to which the Panel expresses no view), they are certainly not indicators that the Respondent registered the disputed domain name in bad faith 15 years previously.

Sixth, the Panel does not consider that the Respondent’s offer to sell the disputed domain name for USD 7,500 signifies that the Respondent registered the disputed domain name for sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy. Not only was this an offer solicited from the Respondent over 15 years after registration of the disputed domain name, it was made to an enquirer who did not disclose its connection with the Complainant. Accordingly, the offer, irrespective of its size, does not constitute persuasive evidence that the Respondent acquired the disputed domain name specifically for sale to the Complainant.

For the above reasons, the Complainant has not satisfied the Panel that the Respondent registered and used the disputed domain name in bad faith and the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking (“RDNH”)

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

See examples of the reasons articulated by panels for finding RDNH at section 4.16 of the WIPO Overview 3.0. In that regard, the present case has some of the hallmarks of what have become known as Plan B cases, where a prospective complainant attempts to buy the disputed domain name, which is Plan A, but is unsuccessful and then files a proceeding under the UDRP, which is Plan B, claiming that it is entitled to the domain name under the Policy but without a plausible legal basis. In the Panel’s view, however, there is a more significant issue in the present case, which is that the Complainant has sought to mislead the Panel in accordance with item (iv) in the fourth paragraph of 4.16.

The Complainant claims that it offered the Respondent USD 2,000 for the disputed domain name when it became aware that the Respondent was listing it for sale in September 2018, that the Respondent counteroffered USD 7,500, which was “much more than what the domain should be sold for” and that it was highly likely that the Respondent significantly increased the price when it discovered that the Complainant was interested in the disputed domain name. As mentioned above, the Complainant invoked this counteroffer by the Respondent as evidence that the Respondent registered the disputed domain name in bad faith for the purpose of sale to the Complainant under paragraph 4(b)(i) of the Policy.

In those circumstances, it was incumbent on the Complainant to produce all relevant communications relating to the counteroffer; but it did not do so. The emails included in the factual summary in section 4 above only came to the attention of the Panel at the behest of the Respondent.

Even these emails do not appear to tell the full story, as they include no reference to the initial USD 2,000 offer mentioned by the Complainant. The Panel therefore deduces that this initial offer was made through the Respondent’s website and that, perhaps having received no or an unsatisfactory response, the decision was taken to follow up with the enquiry email of September 11, 2011. Crucially, this email was sent in the name of CSC. It made no mention of the Complainant and indeed gave no indication that CSC was acting for a client rather than on its own behalf (“We are interested in purchasing…”). Thereafter, the Respondent’s broker responded with the counteroffer of USD 7,500.

Accordingly, the communications appear to contradict the Complainant’s version of events and to confirm the Respondent’s assertion that the Complainant never revealed itself in the course of the purchase enquiries. In these circumstances, it is difficult to see how the Complainant can persuasively claim not only that the counteroffer indicated that the Respondent registered the disputed domain name for the purpose of sale to the Complainant but that the Respondent specifically increased its asking price to USD 7,500 when it allegedly discovered that the Complainant was interested in the disputed domain name.

It is true that, even if the communications had been made in the name of the Complainant, the Complainant would still have had difficulty in establishing bad faith under paragraph 4(b)(i) of the Policy, given that the counteroffer was solicited and came so long after the disputed domain name was registered. But, in the Panel’s view, the comparative weakness of the point did not entitle the Complainant to put forward a contention at odds with the underlying correspondence – which it failed to produce. Had this case been undefended, it is conceivable that an injustice would have been done.

For these reasons, the Panel finds that the Complainant has engaged in RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Presiding Panelist

Joseph Simone
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: February 11, 2019

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