WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. Private Whois buytruvadacheap.com
Case No. D2011-1747
1. The Parties
The Complainant is Gilead Sciences, Inc. of Foster City, California, United States of America, represented by Gretchen Stroud, United States of America.
The Respondent is Private Whois buytruvadacheap.com of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <buytruvadacheap.com> (the “Disputed Domain Name”) is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 14, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 2, 2011. 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 operates a pharmaceuticals business with sales in more than 100 countries in the year 2010 totaling around USD 2.6 Billion. The Complainant holds registrations for the trademark TRUVADA in a number of countries including the United States (“U.S.”), which it uses to designate a combination therapy to treat HIV infection in adults comprising two active ingredients, emtricitabine and tenofovir disoproxil fumarate. Registration has been in effect in the U.S. since 2004. In summary, the U.S. trademark covers pharmaceutical preparations for the treatment of infectious conditions in Class 5.
The Complainant is also the owner of, inter alia, the domain name <truvada.com>, registered in 2004 which resolves to a website about the Truvada pharmaceutical product.
The Disputed Domain Name <buytruvadacheap.com> was registered on August 30, 2010.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark TRUVADA in various countries as prima facie evidence of ownership.
The Complainant submits that the mark TRUVADA is distinctive and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <buytruvadacheap.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the TRUVADA trademark and that the similarity is not removed by the addition of the words “buy” and “cheap” (citing F. Hoffmann-La Roche v. Max Lucky, WIPO Case No. D2011-0218; Merck & Co., Inc., Schering Corporation v. Apiwat Ngunbunsri, WIPO Case No. D2011-0050; Sanofi-aventis and Aventisub II Inc. v. Pavlishin Mihail/PrivacyProtect.org, WIPO Case No. D2011-0274; F. Hoffmann-La Roche AG v. Luige, Mike Jameson / Whois Privacy Protection Service, WIPO Case No. D2011-0380; and F. Hoffmann-La Roche AG v. PrivacyProtect.org / Vicktor Konin, WIPO Case No. D2011-1090.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the TRUVADA mark.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that
“Respondent could not have registered the disputed domain name without having Gilead’s TRUVADA trademark in mind. The Respondent’s intention to use the disputed domain name as a reference to Gilead’s product and to trade off the goodwill in Gilead’s trademark is further made obvious considering that the Complainant’s use of the disputed domain name to sell unauthorized generic versions of Gilead’s product.”
On the issue of use, the Complainant contends that the Respondent uses the Disputed Domain Name for pay-per-click (“PPC”) landing pages: a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements and that it may also be selling unauthorized so called generic product in competition with genuine TRUVADA drug product. In this case, when the Disputed Domain Name <buytruvadacheap.com> is typed in, it redirects traffic to a PPC landing page where “Respondent’s website provides links to online pharmacies selling both products competitive with Gilead’s TRUVADA product as well as other drugs.”
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 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Preliminary Issue - Identification of Respondent or Respondents
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against Private Whois buytruvadacheap.com of Nassau, Bahamas.
Under paragraph 3(b)(v) of the Rules, the Complaint is required, inter alia, to provide the name of the respondent and contact information. The ICANN Registrar Accreditation Agreement (2001) at paragraph 18.104.22.168 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them.” In other words, the registrant and the registrar are required to keep in contact. Having regard also to the commercial benefit derived by the privacy service and onerous obligations incumbent on a complainant, this Panel finds it is procedurally efficient, and equitable, to permit joinder of the privacy service named as the Respondent.
Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information provided in the Complaint and the publicly available WhoIs record (or information provided by the Registrar). Proof of service is not required. Paragraph 2 of the Rules use the words “calculated to achieve actual notice”, not “actually achieve actual notice”. As no response was filed, the Panel has reviewed the record to ensure that the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TRUVADA in Bahamas pursuant to trademark Registration No. 26983 registered on March 13, 2008 in local class 3 for pharmaceutical preparations and substances, and in the U.S. pursuant to U.S. Registration No. 2915213 registered on December 28, 2004 and in numerous other countries globally. In any event, the ownership of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark TRUVADA.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the TRUVADA trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark TRUVADA; (b) preceded by the word “buy”; (c) followed by the word “cheap”; and (d) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation “.com” used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “buytruvadacheap”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words as, in this case, the words “buy” and “cheap”. (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; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).
This Panel finds that the addition of the word “buy” before the Complainant’s registered trademark and the word “cheap” after it does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark. (see F. Hoffmann-La Roche v. Max Lucky, WIPO Case No. D2011-0218 (<cheap-valium.net> and <buy-valium-online.org> confusingly similar to VALIUM trademark); Merck & Co., Inc., Schering Corporation v. Apiwat Ngunbunsri, WIPO Case No. D2011-0050 (<cheapclaritin.info> similar to CLARITIN trademark); Sanofi-aventis and Aventisub II Inc. v. Pavlishin Mihail/PrivacyProtect.org, WIPO Case No. D2011-0274 (<buy-allegra.com> confusingly similar to ALLEGRA trademark); and F. Hoffmann-La Roche AG v. Mike Jameson Luige, WIPO Case No. D2011-0380 (<cheapvaliumoffer.com> confusingly similar to VALIUM trademark).)
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the TRUVADA trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. 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:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of 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; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the TRUVADA mark. In fact, the issue is not whether the Respondent has any rights or legitimate interests in the trademark TRUVADA. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making the bona fide offering of a product or service called “buytruvadacheap”.
The Complainant provided evidence in the form of a screen capture that typing in the Disputed Domain Name diverts traffic to a PPC website with links to other online stores selling products in connection and “generic” competition with Truvada branded pharmaceutical. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a search engine composed of sponsored links in connection with the Complainant’s mark and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark TRUVADA. In Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, the panel found that using the disputed domain name to mislead users by diverting them to a search engine “does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.”
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, in this Panel’s view this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
The evidence is that at the time of, or before the filing of the Complaint, typing in the Disputed Domain Name diverted traffic to a PPC website containing links to online pharmacies selling both products competitive with Complainant’s Truvada product as well as other drugs. In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the Panel found that “the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers […for the reason…] because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”
On any objective view, the Respondent is not a reseller with a legitimate interest 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.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy.
D. 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.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The lack of any good faith attempt to ascertain whether or not it was registering and using someone else’s trademark, may support a finding of bad faith. (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Respondent’s use of the Disputed Domain Name is apparently for domain name monetization unconnected with any bona fide supply of goods or services by Respondent. The business model in this case, is that the Respondent either passively collects click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Truvada HIV medication or it also sells fake or unauthorized Truvada medication, being product which has not received EMA, FDA or other formal regulatory approval, as well (see Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580 (Respondent’s offering of generic Cialis product not a bona fide use of Cialis trademark). Exploitation of the reputation of a trademark to obtain click-through commissions from 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 decisions. (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot 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).
The obvious danger of consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).
This Panel finds that the Respondent has taken the Complainant’s trademark TRUVADA 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 for commercial gain (paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <buytruvadacheap.com> be transferred to the Complainant.
Dated: December 14, 2011