WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc., Gilead Sciences Ireland UC v. Privacy protection service - whoisproxy.ru / Ivan Ivanov, Privacy Hero Inc. / Nikhil Aarav, Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Aarav Nikhil

Case No. D2016-0189

1. The Parties

The Complainant is Gilead Sciences, Inc. of Foster City, California, United States of America, and Gilead Sciences Ireland UC of Carrigtohill, County Cork, Ireland, internally represented.

The Respondents are Privacy protection service - whoisproxy.ru, of Moscow, Russian Federation / Ivan Ivanov of Mumbai, India; Privacy Hero Inc. of St. Peter, Barbados / Nikhil Aarav of Mumbai, India; Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, of Nobby Beach, Queensland (the "Respondent").

2. The Domain Names and Registrars

The disputed domain name <buyharvonicheap.com> is registered with the Registrar Rebel.com Corp., the disputed domain names <buygenericharvoni.net> and <buygenericharvonionline.com> are registered with the Registrar JSC Registrar R01, and the disputed domain names <buyharvonionline.net> and <buyharvonionline.org> are registered with the Registrar REG.RU LLC., (the Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2016. On February 1, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 12, 2016, the Registrar Rebel.com Corp. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name <buyharvonicheap.com> which differed from the named Respondent and contact information in the Complaint. On February 2, 2016, the Registrar JSC Registrar R01 transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names <buygenericharvoni.net> and <buygenericharvonionline.com> which differed from the named Respondent and contact information in the Complaint. On February 18, 2016, the Registrar Reg.RU LLC transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names <buyharvonionline.net> and <buyharvonionline.org> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 2016, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same date.

On February 18, 2016, the Center sent an email communication to the Parties in both English and Russian, regarding the language of the proceeding. On February 18, 2016, the Complainant requested English to be the language of proceeding. The Respondent did not comment on this request within the deadline set by the Center.

The Center verified that the amended 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 in both English and Russian, and the proceedings commenced on February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2016.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 4, 2016. 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 has requested the consolidation of the disputes in relation to each of the disputed domain names in a single proceeding. In support of its request, the Complainant has pointed out that paragraph 10(e) of the Rules authorizes the Panel to consolidate multiple domain name proceedings into a single dispute. According to the Complainant, a single person has common control and registered all disputed domain names, because they were all registered within a day of each other on December 16 or 17, 2015, the IP address listed for all of them is the same, and the websites associated to the disputed domain names are virtually identical. In its amended Complaint, the Complainant also points out to the fact that the Respondent has provided a common email address for the purposes of the registration of all disputed domain names. The Respondent has not rejected the consolidation request and has not denied the contentions of the Complainant on this issue.

The Panel has reviewed the statements of the Complainant and the evidence in the case file, and accepts the request for consolidation made by the Complainant. The evidence in the case file confirms the contentions of the Complainant and the Panel is satisfied that it is more likely than not that all disputed domain names are under common control. In such circumstances, it is reasonable to allow a consolidation of the proceedings. Therefore, in exercise of its powers under paragraph 10(e) of the Rules, the Panel allows the consolidation of the proceedings in respect of all disputed domain names, and will take into account the likelihood that the disputed domain names are under the control of the same person.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrars, the language of the registration agreement for the disputed domain names <buygenericharvoni.net>, <buygenericharvonionline.com>, <buyharvonionline.net> and <buyharvonionline.org> is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute, pointing out that the websites at the disputed domain names and their page headers are in English. According to the Complainant, this shows that the Respondent understands English and can use it. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, and the Respondent has not submitted any objection to the Complainants' request that the proceeding be held in English. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage, particularly considering that, as communicated to the Respondent in Russian, a Russian language Response would have been considered. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English language.

4. Factual Background

The Complainant is a biopharmaceutical company founded in 1987. It has nineteen pharmaceutical products in its portfolio and operates in the United States of America and internationally. The total worldwide revenue of the Complainant in 2014 was approximately USD 24.8 billion. In 2015, the Complainant was listed as No. 118 in the Fortune 500 Companies rankings.

The Complainant develops, manufactures, and offers for sale the pharmaceutical product HARVONI (ledipasvir/sofosbuvir) for the treatment of chronic Hepatitis C virus ("HCV"). The product was launched in the USA in October 2014 after receiving FDA approval. The HARVONI product has obtained significant recognition for the treatment of HCV and its sales in the first nine months of 2015 exceeded USD 10.5 billion.

The Complainant is the owner of the following trademark registration of the sign HARVONI (the "HARVONI trademark"):

- The trademark HARVONI, registered in the USA with registration No. 4,608,545, registered on September 23, 2014 for goods in International Class 5;

- The EU trademark HARVONI with registration No. 012241915, registered on March 6, 2014 for goods in International Class 5;

- The international trademark HARVONI with registration No. 1,186,460 and application date October 21, 2013, registered in numerous countries, including Australia and the Russian Federation, for goods in International Class 5; and

- The trademark HARVONI, registered in Panama with registration No. 23209801, registered on December 16, 2014 for goods in International Class 5.

The Complainant is also the owner of the domain name <harvoni.com>, which was registered on July 12, 2013.

The disputed domain names were registered on the following dates:

- <buygenericharvoni.net> was registered on December 17, 2015;

- <buygenericharvonionline.com> was registered on December 17, 2015;

- <buyharvonicheap.com> was registered on December 16, 2015;

- <buyharvonionline.net> was registered on December 16, 2015; and

- <buyharvonionline.org> was registered on December 16, 2015.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the HARVONI trademark, because they contain it in its entirety. The use of descriptive terms such as "buy," "generic" and "online" in combination with the HARVONI trademark enhances the confusion and misleads consumers into believing they can purchase the HARVONI product online. The addition of the generic Top-Level Domain ("gTLD") ".com" is irrelevant in determining whether the disputed domain names are confusingly similar to the HARVONI trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not associated or affiliated with the Complainant, and the Complainant has not granted any rights to the Respondent to use the HARVONI trademark or to register any of the disputed domain names. The Respondent is not commonly known by the "Harvoni" name, which is a coined term created by the Complainant. According to the Complainant, the registration of a domain name containing a pharmaceutical product brand used in connection with a generic pharmacy website or for the advertising and offering of a competitive product does not constitute a legitimate or fair use of the disputed domain names, and does not give rise to rights and legitimate interests in them.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The registration and use of multiple domain names containing the words "buy", "buy generic" or "buy online" alongside a drug brand name supports a finding of bad faith use and registration. HARVONI is a brand name for the Complainant's version of the drug comprised of the compounds "ledipasvir" and "sofosbuvir", and there is no such thing as "Generic HARVONI". A proper reference to an alternative version of the drug would be "generic ledipasvir/sofosbuvir." The Respondent has intentionally registered and used the HARVONI trademark in bad faith based on its fame. The addition of the word "generic" demonstrates the Respondent's knowledge of the Complainant's rights in the HARVONI trademark.

According to the Complainant, the Respondent's registration through privacy shields, including different privacy companies is a deliberate attempt to conceal his/her true identity. The registration through separate privacy shields (while still maintaining the same server and identical websites) is an attempt to frustrate the UDRP process and to hide from the Complainant.

The Complainant points out that clicking the "BUY" button on the websites at the disputed domain names directs users to a contact form that purports to be the method of making a purchase. There is no indication that users can actually complete a purchase and the form field may in fact be a phishing scam where "Name," "Email," and "Message" are collected. The Respondent is not only collecting personally identifiable information, but also private medical information (that a person has hepatitis C), and phishing is evidence of bad faith use and registration.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under the Rules, paragraph (14)(b): "[…] the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."

In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the HARVONI trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".com", ".org", and ".net" parts of the disputed domain names.

Therefore, the relevant part of the disputed domain name <buygenericharvoni.net> that has to be analyzed is its "buygenericharvoni" section, which contains the distinct elements "buy", "generic" and "harvoni". The "harvoni" element is identical to the HARVONI trademark, while the elements "buy" and "generic" are descriptive and their combination with the "harvoni" element creates the phrase "buy generic harvoni", which is a clear commercial offer to Internet users that uses the distinctiveness of the HARVONI trademark to draw their attention. The same applies to the other disputed domain names, where the HARVONI trademark is also easily distinguishable, and the message to Internet users is respectively "buy generic harvoni online", "buy harvoni cheap" and "buy harvoni online".

Taking the above into account, the Panel finds that the disputed domain names are confusingly similar to the HARVONI trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has never been authorized to use the HARVONI trademark, that the Respondent is not commonly known by the name HARVONI, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

There is no evidence in the case file that the Respondent is commonly known by the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests. The disputed domain names incorporate the HARVONI trademark with the addition of elements like "buy" and "generic", and the websites associated to them advertise "generic Harvoni" and offer interested visitors to assist them with its purchase, for which users have to provide their personal data. Thus, the Respondent exploits the popularity of the Complainant's product and trademark to attract the attention of Internet users to its websites and to attempt to sell them a competitive product or at least to collect their personal data. In the Panel's view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain names.

Taking all the above into account, the Panel finds that the Complainant's prima facie case of lack of the Respondent's rights or legitimate interests in the disputed domain names has not been rebutted.

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(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 website or location or of a product or service on your website or location."

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

In this proceeding, the Complainant has established that the disputed domain names were registered with knowledge of the Complainant's rights in the HARVONI trademark in an attempt to trade off of the reputation and goodwill of the same trademark. The websites at the disputed domain names offer visitors interested in the purchase of "generic Harvoni" to fill a form with their personal data and send it to the Respondent.

The Complainant has provided evidence for the popularity of its HARVONI product and for the content of the websites at the disputed domain names. The disputed domain names incorporate the HARVONI trademark with the addition of elements like "buy" and "generic", and the websites associated to them advertise "generic Harvoni" and offer interested visitors to assist them with its purchase, which users have to provide their personal data. This conduct of the Respondent shows that it was well aware of the HARVONI trademark and its attractiveness when it registered the disputed domain names, and that its decision to register them was made in view of the popularity of the trademark. This conclusion supports a finding that the Respondent registered the disputed domain names in bad faith.

The content of the websites associated to the disputed domain names supports a finding that, by using the disputed domain names, the Respondent has intentionally exploited the goodwill of the Complainant's HARVONI trademark in an attempt to attract, for commercial gain, Internet users to the websites at the disputed domain names and to offer to them products that compete with the Complainant's product, or to collect their personal data. The Panel is of the opinion that this conduct supports a finding that the disputed domain names are being used in bad faith.

On the basis of all the above, and in the lack of any evidence to the contrary, the Panel finds that the disputed domain names have been registered and used in bad faith.

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 names <buygenericharvoni.net>, <buygenericharvonionline.com>, <buyharvonicheap.com>, <buyharvonionline.net> and <buyharvonionline.org> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: April 25, 2016