WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kite Pharma, Inc. v. bin quan wang, wang bin quan

Case No. D2020-3500

1. The Parties

The Complainant is Kite Pharma, Inc., United States of America (“United States”), internally represented.

The Respondent is bin quan wang, wang bin quan, China.

2. The Domain Name and Registrar

The disputed domain name <yescarta-rems.com> (the “Disputed Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 24, 2020, 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 January 28, 2021 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 amendment to the Complaint on January 28, 2021.

The Center verified that the Complaint together with the amendment to 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 February 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on March 19, 2021. 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 United States biopharmaceutical company founded in 2009 operating a business that provides genetically engineered autologous chimeric antigen receptors T-cell therapy (CAR-T) cancer immunotherapy products with sales of approximately USD 456 million in 2019. The Complainant holds registrations for the trademark YESCARTA and variations of it in numerous countries, including, for example, United States Registration No. 5,402,449, registered in class 5 on February 13, 2018.

The Complainant owns numerous domain names that comprise of, or contain, the trademark YESCARTA, including the domain name <yescarta.com>, which was registered on June 14, 2016.

The Respondent registered the Disputed Domain Name on October 3, 2020. The Disputed Domain Name resolves to an online gambling website.

5. Parties’ Contentions

A. Complainant

The Complainant cites its United States trademark registrations including No. 5,402,449, registered on February 13, 2018 and numerous other registrations around the world, for the mark YESCARTA as prima facie evidence of ownership.

The Complainant submits that the mark YESCARTA is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the YESCARTA trademark and that the similarity is not removed by the addition of a hyphen or the word “rems”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has exclusive and prior trademark rights in the word YESCARTA, the Respondent has no connection or affiliation with the Complainant and has not received its license or consent to use the mark, and that the Respondent has not presented any legitimate interest it might have despite being afforded an opportunity to do so. The Complainant also contends that an effort to divert search-based Internet traffic is not a bona fide offering of goods and services in view of the fact that the Unites States’ Food and Drug Administration (FDA) exercises the authority to require something called a Risk Evaluation and Mitigation Strategy (REMS) from manufacturers to ensure that the benefits of a drug or biological product outweigh its risks.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules. On the issue of registration, the Complainant submits that “Given the well-known status of the YESCARTA mark and the inclusion of REMS in the [Disputed] Domain [Name], Respondent was fully aware of Complainant’s rights in the YESCARTA name when it registered the [Disputed] Domain [Name]” and, on the issue of use, that “the pointing of the [Disputed] Domain [Name] to a sports gambling website; and […] the use of a privacy shield” is also evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark YESCARTA in numerous countries including, pursuant to United States Registration No. 5,402,449. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the YESCARTA trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark YESCARTA; (b) followed by a hyphen; (c) followed by the acronym “rems”; (c) followed by the gTLD “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “yescarta-rems”.

It is also well established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, a hyphen and the word “rems” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. The Respondent has taken the trademark in its entirety and added the descriptive word “rems”, that connotes a United States FDA drug assessment program. The addition of this acronym does not prevent a finding of confusing similarity between Disputed Domain Name and the trademark.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a gambling web page thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.

The Complainant points out that the word REMS is a term of art used in the pharmaceutical industry by the Unites States’ FDA, a government body that exercises authority to require what it calls a “Risk Evaluation and Mitigation Strategy” (REMS) from drug or biological manufacturers to ensure that the benefits of a particular product outweigh its risks.

This Panel accepts the Complainant’s uncontested submission that: “there is no legitimate reason for Respondent to have registered a domain name containing Complainant’s YESCARTA trademark together with REMS […] The official REMS website for Kite’s YESCARTA product is at ‘www.yescartatecartusrems.com’”.

On any objective view, the Respondent is not a reseller with rights or legitimate interests in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.

In the absence of a response, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s trademark in order to attract Internet users to a gambling website and has been using the Disputed Domain Name to divert Internet traffic to a gambling webpage.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, given the inclusion of the term of art “rems” in the Disputed Domain Name, a term peculiar to the life sciences sector in which the Complainant operates, together with the Complainant’s trademark, it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of the Complainant’s trademark (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Celgene Corporation v. Diana Claire, WIPO Case No. D2016-0922, (“Respondent’s inclusion of a term, ‘pharma,’ which refers to Complainant’s filed ofactivity, puts beyond doubt whether Respondent has targeted Complainant”).

On the issue of use, the evidence is that the Disputed Domain Name resolves to a gambling webpage unconnected with any bona fide supply of goods or services by the Respondent. Exploitation of the reputation of a trademark for the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005‑0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

Although there is no evidence the Respondent has profited from its activities, this Panel finds that it is sufficient for a finding of bad faith use that the Respondent intended that it be the only beneficiary of the diverted Internet traffic (see: LEGO Juris A/S v. Project Xenos, Ty Weir, WIPO Case No. D2011-1281 (“commercial gain need not accrue to Respondent – only that Respondent had the intention, for commercial gain”); Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062 (“through trickery, the perpetrator of the initial interest confusion has obtained access to an audience that he or she would not otherwise have reached […] the registrant’s interest in freedom of expression prevails, but on condition that the expression must be non-commercial in nature, and that the registrant must have acted in a ‘fair’, or ‘legitimate noncommercial’ way”).

In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark YESCARTA and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a gambling web page for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <yescarta-rems.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: March 24, 2020