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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. ICS INC.

Case No. D2016-0810

1. The Parties

The Complainant is Gilead Sciences, Inc. of Foster City, California, United States of America (“US”), internally represented.

The Respondent is ICS INC. of Grand Cayman, Cayman Island, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <webmailgilead.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2016. On April 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2016, 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 April 27, 2016 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 April 29, 2016.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 4, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was May 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2016.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 1, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was founded in 1987 and today is one of the leading biopharmaceutical companies in the world, which discovers, develops and commercializes innovative medicines in areas of unmet medical need. It maintains operations in the US and internationally, with marketing subsidiaries in a number of countries, including Canada and, within the European Union, Austria, Belgium, the Czech Republic, Denmark, Finland, France, Germany, Greece, Ireland, Italy, the Netherlands, Poland, Portugal, Spain, Sweden and the United Kingdom of Great Britain and Northern Ireland (“UK”). For the fiscal year 2015, the Complainant’s total revenue amounted to approximately USD 32.2 billion. The Complainant provides an Internet-based email system, i.e., a webmail system, for its employees to login, read, and send work email messages, which is located at “webmail.gilead.com”.

The Complainant owns numerous trademark registrations for GILEAD, inter alia, US trademark registration no. 3,782,880 GILEAD, registered on April 27, 2010; US trademark registration no. 3,604,505 GILEAD, registered on April 7, 2009; US trademark registration no. 3,665,182 GILEAD, registered on August 4, 2009; US trademark registration no. 3,251,595 GILEAD, registered on June 12, 2007; and US trademark registration no. 4,279,898 GILEAD, registered on January 22, 2013 (hereinafter referred to as the “GILEAD Marks”). The GILEAD Marks cover numerous goods and services included in classes 41, 36, and 5.

The disputed domain name was registered on September 16, 2007, and has been used in connection with a website redirecting traffic to a variety of advertisements, inter alia,OfferHotSpot.com, which promoted the “new iPad Air2”, and WordDictionary.co.uk. In addition, the disputed domain name was offered for sale for an amount exceeding USD 3,000. The Complainant provided information that the Respondent was already ordered to transfer a similar domain name in a UDRP proceeding (Banco Bradesco S/A v. Contact Privacy Inc. / ICS INC., WIPO Case No. D2014-0638 (<webmailbradesco.com>)).

On October 29, 2015, the Complainant emailed Domain Gateway, an advertising company providing auto generated advertisements for the Respondent, to inform the company that the disputed domain name “infringes upon the intellectual property rights of Gilead Sciences.” Subsequently, the disputed domain name ceased redirecting traffic to advertisements, and currently yields to a standard network error.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is identical and confusingly similar to the Complainant’s famous and well-known GILEAD Marks as it contains such marks in their entirety and as the additional term “webmail” is generic. In addition, the Complainant argues that the disputed domain name is identical to the Complainant’s domain name <webmail.gilead.com>, with the slight exception that the disputed domain name lacks a period (or “dot”) between “webmail” and “gilead” and that it appears the disputed domain name was adopted exactly because it is confusingly similar to the Complainant’s official webmail platform so that the Respondent can personally derive financial benefit from advertising traffic generated by the Complainant’s employees mistakenly not typing the “dot”.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the GILEAD Marks, or to register any domain names incorporating the GILEAD Marks. The Respondent is not commonly known by the GILEAD Marks. The Respondent registered the disputed domain name long after the Complainant had established rights in the GILEAD Marks, as the Respondent’s diversionary registration and use of the disputed domain name does not represent a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy and does not constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. The Respondent registered the disputed domain name primarily for the purpose of selling it, and the Respondent’s attempt to hide behind a privacy shield is evidence of the Respondent’s lack of a legitimate interest in and to the disputed domain name.

(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith use, the Complainant argues that the registration and use of the disputed domain name approximately 17 years after the Complainant acquired rights in and to the GILEAD Marks along with the fame and renown of such marks suggests bad faith and that this fame, renown, and reputation caused the Respondent to register and use the disputed domain name in bad faith to pose as the Complainant. With regard to bad faith use, the Complainant contends that failure to make a bona fide use of a domain name during the two years following registration constitutes bad faith and that the Respondent’s lack of bona fide use for over an eight-year period exemplifies the Respondent’s bad faith at the time of registration. With regard to bad faith use, the Complainant states that the Respondent used the disputed domain name in connection with typosquatting, competitive advertising revenue generation, and a market offer to sell the disputed domain name. Finally, the Complainant contends that the Respondent’s private registration is a strong evidence of bad faith as well.

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 must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s GILEAD Marks and is confusingly similar to such marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms, such as “webmail”.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 the respondent 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 customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is a consensus view among UDRP panelists that a complainant has to make only an unrebutted prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the owner of the disputed domain name has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to show any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent used the disputed domain name in connection with competitive advertising revenue generation and a market offer to sell the domain. Such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the GILEAD Marks. The Complainant has provided evidence that the GILEAD Marks have been used in commerce for decades and that the Complainant and its marks are listed in various rankings, inter alia, the Fortune 500 Companies rankings, and have been subject to major press coverage. Moreover, as discussed under the Factual Background above, the Respondent was ordered to transfer a similar domain name in a previous proceeding under the UDRP, and the disputed domain name corresponds to a third-level domain name which the Complainant uses in commerce. It is in the Panel’s view, on balance, hardly conceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the GILEAD Marks, taking into account the distinctiveness of the GILEAD Marks, the fact that the disputed domain name corresponds to a domain name used by the Complainant in commerce and the overall circumstances of the present case.

As to bad faith use, by fully incorporating the GILEAD Marks into the disputed domain name and by using such domain name in connection with competitive advertising revenue generation the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. In addition, the facts of the case also justify a finding of bad faith under paragraph 4(b)(i) of the Policy as the Respondent offered to sell the disputed domain name for an amount exceeding the sum of USD 3,000, which in all likelihood exceeds the Respondent’s documented out-of-pocket costs directly related to the disputed domain name by far. Finally, given that the Respondent was previously found to have abusively registered and used domain names corresponding to third parties’ trademarks, the Respondent acted in bad faith also under paragraph 4(b)(ii) of the Policy.

Therefore, the disputed domain name was registered and is being used in bad faith, and the Complainant thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 <webmailgilead.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: June 14, 2016

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