The Complainant is Celgene Corporation of Summit, New Jersey, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Russel, Cloudcare of Dhaka, Bangladesh, self-represented.
The disputed domain name <cellgenebiotech-bd.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 13, 2018, the Center received the Complainant's request to suspend the proceeding for settlement discussion. On March 14, 2018, the Center confirmed the Parties that the administrative proceeding is suspended until April 13, 2018 for purposes of settlement discussions concerning the disputed domain name. On April 12, 2018, the Center received the Complainant's request to reinstitute the proceeding, and notified the Parties of the reinstitution on April 13, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2018. On April 18, 2018, the Center received the Respondent's communication indicating that it is willing to transfer the disputed domain name. On April 23, 2018, the Center sent the Parties a communication regarding a possible settlement, but no suspension was requested by the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. No Response was filed with the Center. The Center notified the Parties of the commencement of panel appointment process on May 9, 2018.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 17, 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.
The Complainant is Celgene Corporation, an American company whose main activity consists of the discovery, development and sale of therapies for the treatment of cancer and inflammatory diseases.
The Complainant is the owner of the following trademark registrations, among others:
|
Trademark |
Registration Number |
Registration Date |
Class |
Jurisdiction |
|
CELGENE |
2379836 |
August 22, 2000 |
5 |
United States |
|
CELGENE |
2888517 |
September 28, 2004 |
1, 5, 41, 42, |
United States |
|
C CELGENE (and design) |
4250217 |
November 27, 2012 |
5, 35, 41, 42, 44, |
United States |
The disputed domain name <cellgenebiotech-bd.com> was registered on January 2, 2018.
The Complainant argues the following:
That the disputed domain name fully incorporates the Complainant's CELGENE trademarks, with the addition of the letter "L".
That the addition of the term "Biotech" to the disputed domain name increases the risk of confusion among Internet users as it describes the Complainant's field of operation.
That the Complainant has obtained widespread recognition in the pharmaceutical industry, since before the time when the Respondent registered the disputed domain name.
That the Respondent had knowledge of the Complainant's rights over the trademark CELGENE prior to the registration of the disputed domain name.
That Internet users who visit the website to which the disputed domain name resolves are likely to believe that it is owned and operated by the Complainant, or that it is otherwise associated with, sponsored or endorsed by the Complainant.
That the Respondent has no affiliation with the Complainant.
That there is no evidence that suggests a legitimate interest or bona fide offering of goods or services by means of the website to which the disputed domain name resolves.
That the Respondent's website did not feature any contact information as to the Respondent, and that said site displayed incomplete and incomprehensible information in general.
That the Respondent attempted to take commercial advantage of the Complainant's trademarks and reputation, as well as to trade off the Complainant's goodwill.
That the Respondent has not used the disputed domain name for any legitimate purpose, by using a placeholder website.
That the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
That the Complainant served the Respondent with a letter informing it of the Complainant's rights over the CELGENE trademark, requesting the transfer of the disputed domain name.
That the Respondent did not reply to said letter before the commencement of the proceeding.
The Respondent did not provide substantive reply to the Complainant's contentions.
On March 13, 2018, the Complainant's representative sent an email communication to the Center informing that the Respondent had agreed to transfer the disputed domain name. In a further communication sent on the same day, the Complainant requested the suspension of the proceeding to explore settlement options with the Respondent. The Center accordingly suspended the proceeding.
On April 12, 2018, the Complainant requested the proceeding to be reinstated, noting that the Respondent had failed to communicate with the Complainant during the suspension period granted pursuant to the Rules.
Upon being formally notified by the Center with the Complaint and Commencement of Administrative Proceeding, on April 18, 2018, the Respondent sent an email communication to the Center consenting to transfer the disputed domain name to the Complainant and requesting information on how to proceed with such transfer, as follows:
"I don't have any knowledge about this legal issues. I just want to cancel the domain and transfer it to Celgene Corporation. Please advise me in simple language, how can I cancel my domain and transfer it to Celgene corporation."
The Center informed the parties about the possibilities to request the suspension of the proceeding for settlement purposes. No request for suspension was submitted by the Complainant.
Therefore, the proceeding has continued its normal path.
Previous panelists have decided in similar cases that when a Respondent has expressed an intention to conclude the proceeding by transferring the disputed domain name at hand, said domain name should be transferred on the basis of the Respondent's request (see section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
In such cases, panelists have held that a genuine unilateral consent to transfer a domain name issued by a Respondent provides a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) (see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).
In this case, the Respondent's email communication is unequivocal and clear, and thus can be deemed to be a genuine unilateral consent to the Complainant's requested remedy (transfer). That the parties did not reach a settlement agreement within the suspension period granted by the Center does not affect the fact that the Respondent has consented to the transfer of the disputed domain name (see Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips, WIPO Case No. D2015-0189).
Accordingly, the Panel does not deem necessary to render a substantive decision on the merits of this case and therefore orders that the disputed domain name be transferred to the Complainant.
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 <cellgenebiotech-bd.com> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: May 31, 2018