Case Number: D2018-2673
Complainant: Celgene Corporation
Represented by: Cozen O'Connor
Pharmaceutical giant Celgene has been found guilty of attempted Reverse Domain Name Hijacking by a three-member panel of the World Intellectual Property Organization. Celgene, which owns celgene.com, was attempting to gain control of cellgene.com, which has been registered since 2003. The WIPO panel issued its ruling February 11, 2019.
The panel found that the terms, “cell” and “gene” sufficiently constituted generic terms, ruling that the domain owner bought the domain in order to capitalize on the value of the generic terms. The panel further ruled that Celgene had no inherent rights to those generic terms, simply because the combined words may have been confusingly similar to Celgene’s name and trademark.
“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 panelists wrote.
“The combined use of terms “cell” and “gene” in connection with “cell gene therapy” was already in widespread use at that time,” the panelists further wrote. “Accordingly, the combination is not unique to the Complainant.”
In issuing their ruling, panel members chastised Celgene for attempting to use the UDRP process only after their effort to buy the domain had failed. The panel further admonished Celgene for waiting so long to attempt to acquire cellgene.com.
“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 panel wrote.