WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc., Gilead Sciences Ireland UC, Gilead Sciences LLC v. Registration Private, Domains By Proxy, LLC / apple infoway, MillionHealthPharma / Preetha Infoway, Apple Infoway

Case No. D2018-2281

1. The Parties

The Complainants are Gilead Sciences, Inc., Gilead Sciences Ireland UC and Gilead Sciences LLC of Foster City, California, United States of America (“US”), represented by Jack Wessel, US.

The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / apple infoway, MillionHealthPharma of Chennai, Tamil Nadu, India / Preetha Infoway, Apple Infoway of Chennai, Tamil Nadu, India.

2. The Domain Names and Registrars

The disputed domain name <vemlidy-generic.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2018. On October 9, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 9 and 10, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 17, 2018.

The Center verified that the Complaint together with 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, and the proceedings commenced on October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 16, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on December 5, 2018. 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 Complainants are active in the biopharmaceutical sector and maintain operations in the United States and internationally.

The Complainants’ group of companies was listed at the 116th position in the “Fortune 500 Companies” ranking in 2018, 57th in Barron’s listing of the “World’s Most Respected Companies” in 2017 and 137th in “Forbes’ Global 2000: Top Regarded Companies” in the same year.

After receiving US Food and Drug Administration (FDA) approval, the Complainants launched, in the United States, pharmaceuticals products under the trademarks ATRIPLA in July 2006, EPCLUSA in June 2016, HARVONI in October 2014, SOVALDI in December 2013, and VEMLIDY in November 2016.

The Complainants’ ATRIPLA product is the first once-daily single-tablet regimen for the treatment of HIV infection; EPCLUSA is a treatment that can cure all six major genotypes of HCV infection; HARVONI is a single-tablet regimen cure for HCV infection; SOVALDI is a treatment for certain types of HCV infection that does not require co-administration of interferon; and VEMLIDY is on the American Association for the Study of Liver Diseases’ list of preferred HBV therapies.

The Complainants’ ATRIPLA, EPCLUSA, HARVONI, and SOVALDI products have been included in the World Health Organization’s List of Essential Medicines.

The Complainants are the owner, amongst others, of the following trademark registrations:

- European Union trademark registration No. 004503091 for ATRIPLA (word mark), filed on June 10, 2005 and registered on May 22, 2006, in class 5;

- United States trademark registration No. 3276743 for ATRIPLA (word mark), filed on March 25, 2005 and registered on August 7, 2007, in International class 5;

- European Union trademark registration No. 012953154 for EPCLUSA (word mark), filed on June 9, 2014 and registered on October 31, 2014, in class 5;

- Indian trademark registration No. 2873965 for EPCLUSA (word mark), registered on April 23, 2016, in class 5;

- United States trademark registration No. 4911858 for EPCLUSA (word mark), filed on May 15, 2014 and registered on March 8, 2016, in class 5;

- European Union trademark registration No. 012241915 for HARVONI (word mark), filed on October 22, 2013 and registered on March 6, 2014, in class 5;

- Indian trademark registration No. 2617327 for HARVONI (word mark), registered on October 24, 2013, in class 5;

- United States trademark registration No. 4608545 for HARVONI (word mark), registered on September 23, 2014, in International class 5;

- European Union trademark registration No. 1133053 for SOVALDI (word mark), filed on August 22, 2012 and registered on September 6, 2013, in class 5;

- Indian trademark registration No. 2401492 for SOVALDI (word mark), registered on September 24, 2012, in class 5;

- United States trademark registration No. 4468665 for SOVALDI (word mark), filed on August 21, 2012 and registered on January 21, 2014, in International class 5;

- European Union trademark registration No. 014453146 for VEMLIDY (word mark), filed on August 7, 2015 and registered on November 25, 2015, in class 5;

- Indian trademark registration No. 3251331 for VEMLIDY (word mark), registered on April 20, 2017 in class 5;

- United States trademark registration No. 5001852 for VEMLIDY (word mark), filed on September 22, 2015 and registered on July 19, 2016 in International class 5.

The Complainants are also the owners of the domain names <atripla.com>, registered on March 3, 2005; <epclusa.com>, registered on January 20, 2011; <harvoni.com>, registered on July 12, 2013; <sovaldi.com>, registered on April 5, 2012; and <vemlidy.com>, registered on August 3, 2015.

The disputed domain names <generic-atripla.com>, <generic-epclusa-in-romania.com>, <generic-harvoni-in-romania.com>, <generico-epclusa-italia.com>, <generico-harvoni-italia.com>, <generic-sovaldi.com>, and <generic-vemlidy.com> were registered on April 25, 2018, while the disputed domain name <vemlidy-generic.com> was registered on August 18, 2018.

The disputed domain names <generic-atripla.com>, <generic-epclusa-in-romania.com>, <generic-harvoni-in-romania.com>, <generico-epclusa-italia.com>, <generico-harvoni-italia.com>, and <generic-sovaldi.com> are currently pointed to a registrar parking page with pay-per-click links, while <vemlidy-generic.com> is not redirected to an active website. The disputed domain name <generic-vemlidy.com> resolves to a website providing information about the relevant medicine. According to the screenshots submitted by the Complainants as Exhibit A to the Complaint, the disputed domain names were previously pointed to websites providing information about the Complainants’ “ATRIPLA”, “EPCLUSA”, “HARVONI”, “SOVALDI”, and “VEMLIDY” pharmaceutical products and promoting the sale of generic versions of the same as well as other competitive products.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed domain names are confusingly similar to their trademarks since they reproduce the trademarks ATRIPLA, EPCLUSA, HARVONI, SOVALDI, and VEMLIDY in their entirety with the addition of generic or descriptive terms.

The Complainants submit that the Respondents do not have any rights or legitimate interests in the disputed domain names because:

- the Respondents are not associated or affiliated with the Complainants and the Complainants have not granted any rights to the Respondents to use the trademarks ATRIPLA, EPCLUSA, HARVONI, SOVALDI and VEMLIDY or any of the disputed domain names;

- the Respondents are not making a non-commercial fair use of the disputed domain names, which is evidenced by the fact that the corresponding websites offer to sell and facilitate sales of products;

- the Respondents’ diversionary registration and use of the disputed domain names does not represent a bona fide offering of goods or services;

- the Respondents’ attempt to hide behind privacy shields is evidence of their lack of a legitimate interest in and to the disputed domain names;

- the Respondents’ strategy of registering the eight cybersquatted domain names is to cast a wide net to capture Internet search queries and URL based navigation and divert individuals away from the Complainants’ genuine “ATRIPLA”, “EPCLUSA”, “HARVONI”, “SOVALDI”, and “VEMLIDY” websites and the Complainants’ authorized distribution channels;

- the Respondents targeted the lifesaving “ATRIPLA”, “EPCLUSA”, “HARVONI”, “SOVALDI” and “VEMLIDY” drugs due to their high level of fame and especially targeted the “ATRIPLA”, “EPCLUSA”, “HARVONI”, and “SOVALDI” drugs due to their utmost importance as “essential” drugs as determined by the World Health Organization;

- as the Complainants’ ATRIPLA, EPCLUSA, HARVONI, SOVALDI, and VEMLIDY trademarks are
well-known, there can be no legitimate use of the same by the Respondents;

- there are vague references/disclaimers on the websites at the disputed domain names, purporting to supply products from India made by various generic companies such as Abbott, Cipla, Dr. Reddy’s, Hetero, Mylan, Natco, and Zydus, but it does not appear that the Respondents are authorized to distribute, sell, exhibit, or offer to sell any controlled pharmaceutical products. Additionally, there does not appear to be any requirement that the purchaser have a legitimate prescription in order to purchase the pharmaceutical products. Assuming, arguendo, that the Respondents had some authorization to sell the products, the purported sales would not be legal under Indian Law, as the Respondents do not possess the requisite license from the Indian government and there is no reference to such a license on the websites to which the disputed domain names resolve;

- commercial use of trademarks to advertise or offer competitive products does not constitute fair use or give rise to legitimate rights/interests to use the disputed domain names;

- prior panels have acknowledged that the registration of domain names containing pharmaceutical product brands used in connection with generic pharmacy websites is not a legitimate use;

- the websites at the disputed domain names display some language at the bottom of the page, which appear directed at either establishing legitimacy and/or avoiding prosecution by the Complainants or the Indian government. For instance, the websites discuss obtaining information from a healthcare provider regarding specific medical advice and complete information about the risks and benefits of using the products. However, assuming that the websites are routing to another source for purchase, such
re-routing or facilitation of a sale would be a prohibited “exhibition” or offer to sell, illegal under licensing laws;

- overwhelming evidence of bad faith precludes a finding that the use described herein could be legitimate.

The Complainants claim that the Respondents’ registration and use of the disputed domain names demonstrates bad faith in all of its acts to date, including:

- intentional registration of the Complainants’ famous trademarks;

- a pattern of cybersquatting on multiple domain names;

- use of privacy shields to evade detection by the Complainants and government/regulatory bodies;

- purposefully registering domain names with search terms to divert Internet users;

- making illegal sales of products without requisite licenses;

- purporting to sell generic products that have not been authorized by the Complainants, which are of an unknown origin and potentially dangerous to consumers;

- attempting to conceal it is the Respondents’ true identity through privacy shields while furthering wrongful activities;

- combining in the disputed domain names the Complainants’ trademarks with search strings that the Respondents believe will drive most traffic, e.g., “generic ATRIPLA”, “generic EPCLUSA in Romania”, “generico HARVONI Italia”, “generic SOVALDI”, or “generic VEMLIDY”.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Preliminary procedural issue: consolidation of multiple Respondents.

Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Complainants asserted that the disputed domain names, although registered in the name of different entities, are under common control since:

(i) the disputed domain names all include the terms “generic(o)” and “brand”;

(ii) the IP address for all the disputed domain names except for <generic-vemlidy.com> is the same, hosted by a provider located in Mumbai;

(iii) the disputed domain names were all registered on the same day, April 25, 2018, except for <vemlidy-generic.com>, which was registered on August 18, 2018 – 4 days after the Complainant notified the registrar of <generic-vemlidy.com> of the illicit website operating on such disputed domain name;

(iv) all websites hosted at the disputed domain names list the same contact information.

The Panel finds that the elements highlighted by the Complainants and referenced above demonstrate a common control of the disputed domain names by the Respondents. Indeed, the disputed domain names all incorporate the Complainants’ trademarks with the mere addition of descriptive terms and have been pointed to generic pharmacy websites promoting products which compete with the ones of the Complainants.

In view of the above and of the commonalities in the registration information of the disputed domain names, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

Therefore, the Panel will now proceed to a decision on the merits of the case.

B. Identical or Confusingly Similar

The Panel finds that the Complainants have established rights over the trademarks ATRIPLA, EPCLUSA, HARVONI, SOVALDI, and VEMLIDY based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.

It is well-accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

The Panel notes that the disputed domain names reproduce the Complainants’ trademarks in their entirety with the addition of hyphens and of the descriptive terms “generic/generico”, “italia” (“Italy” in Italian) and “in romania”, which does not prevent a finding of confusing similarity. The Top-Level Domain (“TLD”) “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (Section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainants have proven that the disputed domain names are confusingly similar to a trademark in which the Complainants have established rights according to paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel finds that the Complainants have made a prima facie case and that the Respondents, by not submitting a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no relationship between the Complainants and the Respondents and the Complainants have not authorized the Respondents to register or use its trademark or the disputed domain names. Moreover, there is no evidence that the Respondents might be commonly known by the disputed domain names.

The Panel finds that the Respondents’ use of the disputed domain names to redirect users to websites promoting the Respondent’s purported sale of generic drugs containing the same active substance as the Complainants’ branded pharmaceutical products and additional competitive products does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants’ trademarks.
Prior panels held that registration of a domain name containing a pharmaceutical product brand used in connection with a generic pharmacy website is not a legitimate use. See, inter alia, F. Hoffmann-La Roche AG v. Whoisguard Protected / Sallu Org, Salman Baig, WIPO Case No. D2014-0480.

Therefore, the Panel finds that the Complainants have proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainants prove that the disputed domain names were registered and are being used by the Respondents in bad faith.

The Panel finds that, in view of the Complainants’ prior registration and use of the trademarks ATRIPLA, EPCLUSA, HARVONI, SOVALDI, and VEMLIDY in connection with the Complainants’ pharmaceutical products, the Respondents were or should have been aware of the Complainants’ trademarks at the time of registration.

Furthermore, the circumstance that the disputed domain names have been pointed to websites featuring the Complainants’ trademarks and providing information about the Complainants’ products demonstrates that the Respondents were indeed well aware of the Complainants and their trademark.

The Panel notes that, in view of the use of the disputed domain names to divert users to the websites described above, where the Respondents offer to sell and/or facilitate the sale of purported generic pharmaceutical products including those of competitors, the Respondents intentionally attempted to attract Internet users to their websites, for commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve according to paragraph 4(b)(iv) of the Policy.

See, along these lines, Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066: “The Respondent’s use of the Complainant’s trademark to sell products that compete with the Complainant’s medicine which bears the name of the mark provides further evidence of bad faith. […] It is fairly outrageous to attract customers to your site by breaching someone else’s trademark rights and then use that site to sell products that compete with the person or company whose rights you are infringing”. See also Aventis v. Igor Peklov, WIPO Case No. D2008-1419 (acompliabuyonline.com): “use of the disputed domain name for an online pharmacy site on which the Respondent sells a large variety of drugs including counterfeit products and placebo products clearly indicates that Respondent's primary intent was to redirect Internet users to his website and thus capitalizing on the goodwill of Complainant's trademark”.

The Panel also finds that the Respondents registered the disputed domain names in order to prevent the Complainants from reflecting their trademarks in corresponding domain names and they have engaged in a pattern of such conduct according to paragraph 4(b)(ii) of the Policy, since they registered 8 domain names incorporating the Complainants’ trademarks.

Therefore, the Panel finds that the Complainants have also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.

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 <generic-atripla.com>, <generic-epclusa-in-romania.com>, <generic-harvoni-in-romania.com>, <generico-epclusa-italia.com>, <generico-harvoni-italia.com>, <generic-sovaldi.com>, <generic-vemlidy.com>, and <vemlidy-generic.com> be transferred to the Complainants.

Luca Barbero
Sole Panelist
Date: December 21, 2018