After originally being found guilty of reverse domain name hijacking, pharma company gets domain.
Pharmaceutical company Celgene (NASDAQ: CELG) has settled a lawsuit it brought against the domain name CellGene.com. It’s quite a turn of events, too.
The company was found to have engaged in reverse domain name hijacking earlier this year after it filed a UDRP against the domain name. The panel believed Celgene tried to mislead it.
After the adverse UDRP finding, the company hired a new attorney—David Weslow of Wiley Rein—and filed an in rem lawsuit against the domain name. The lawsuit claimed violation of the Anticybersquatting Consumer Protection Act (ACPA) and trademark infringement.
The domain owner originally tried to fight the lawsuit. It filed a response and counterclaims.
In the end, however, it settled by agreeing (pdf) to hand over the domain and $5,000:
On August 23, 2019, Defendant CELLGENE.COM served an Offer of Judgment in this action in which CELLGENE.COM: (a) agreed to transfer all rights to the domain name CELLGENE.COM to Celgene; (b) agreed to pay to Celgene the amount of $5,000.00; (c) agreed to dismiss with prejudice all counterclaims asserted against Celgene; and (d) acknowledged that Celgene had a reasonable basis for filing the claim set forth in the Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding involving CELLGENE.COM under WIPO Case No. D2018-2673
I find it bizarre that the owner eventually agreed to pay money after originally fighting the case. It was an in rem case against the domain name. The owner could have just not responded and only lost the domain.
DavidJCastello says
They got the domain name owner to cough up five grand? After losing a RDNH decision? Sounds like Celgene’s new attorney threatened him with such ridiculous damages that the domain owner panicked and thought he got off light. He should’ve hired a great attorney like Berryhill, Goldberger or Muscovitch, especially with the RDNH decision in his corner.
In 2002, we had some guy come after us for our Caution.com. He was so litigious that CafePress stopped selling any merchandise with the word “caution” on it. He even came by my place in Palm Springs to spy on me (most unwise). We won the decision, but he was threatening us with every damage in the book. He said he was going to wipe us out and he had a string of wins to boot. To a novice, people like him can be terrifying, but never flinch with a bully. Always get a great lawyer and fight back.
Nick says
So instead of going for 100K RDNH damages, he pays 5K. That guy had a very bad attorney.
snoopy1267 says
I think the original UDRP decision wasn’t great, at least in terms of the RDNH finding.
C.S. Watch says
I see an earliest CELLGENE.COM page dating 2001, with Celgene’s mark dating from 1998. The Whois cites 2003. But that doesn’t change the fact that “cell gene” is inarguably generic and untouchable under the ACPA.
Posting a domain for public sale might mean he has to trudge into court to state that it is a generic. But any judge without head trauma is aware that every living thing has cell genes. I believe several trillions changes hands mapping ours. Bit of a market that. Duh.
Under the law, this registrant keeps his name. But some people are vulnerable to threat, and life’s short to share oxygen with legal parasites. Inevitably someone will expend the bother to sue a Wiley Rein client for six figures and attorneys’ fees, and that will be an end of Weslow’s short con, and career.
Side note, Celgene are the vampires who had to pay a 280 million dollar settlement to a whistleblower for their cancer fraud. That’s just the tip of their dirtberg:
https://www.google.com/search?q=celgene+lawsuit&oq=celgene+lawsuit&aqs=chrome..69i57.2248j0j9&sourceid=chrome&ie=UTF-8
Snoopy says
“Cell gene” doesn’t mean anything, in what way is it “untouchable” under the ACPA?
C.S. Watch says
Esoteric doesn’t preclude generic. Somatic cell gene, cancer cell gene, stem cell gene…this field is an enormous market. Over a million Google page returns for “cell gene” and 8.5M for the medical field “cell and gene.”
C.S. Watch says
Which is not to say that this registrant can’t whip around and sue Celgene under the ACPA for 100,000.+ and his domain name right now.
A settlement is a contract. If fraud or misrepresentation occurred during the negotiation process, any resulting contract can be held unenforceable. We already have three WIPO panelists stating that Celgene misrepresented facts in their UDRP complaint:
https://domainnamewire.com/2019/02/19/wipo-panel-says-celgene-tried-to-mislead-it-in-cybersquatting-claim/