WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. Domains By Proxy, LLC / Online Management
Case No. D2014-1235
1. The Parties
The Complainant is Gilead Sciences, Inc. of California, United States of America (“USA”) represented internally.
The Respondent is Domains By Proxy, LLC of USA / Online Management of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <gileadhivresources.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2014. On July 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2014, 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 July 22, 2014, 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 amended Complaint on July 25, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2014.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 21, 2014. 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 was founded in 1987 in the USA, and is a research-based biopharmaceutical company that discovers, develops and commercializes innovative medicines in areas of unmet medical need. It is one of the largest biopharmaceutical companies in the world, and one of its primary areas of focus is human immunodeficiency virus (“HIV”). The Complainant maintains operations in the USA and internationally, with marketing subsidiaries in a number of countries within the European Union. Last year its total worldwide revenue was approximately USD 11.2 billion. It has been a market leader in treatments for HIV prevention and infection for more than a decade, with more than five million patients worldwide on an HIV treatment regimen containing Gilead-developed products. In addition, the Complainant is also involved in integrating routine HIV screening into healthcare, and hosts a YouTube channel entitled “Gilead HIV” which has educational videos on HIV and HIV treatment.
The Complainant owns exclusive rights to the GILEAD SCIENCES trademark and the GILEAD trademark, including rights secured through numerous trademark registrations around the world, which date from at least as early as 1990 and 2007, respectively.
The Complainant is the registrant of the domain name <gilead.com>, and in 1998 created the corresponding website devoted to its company. In 2010 it registered the domain name <gileadhiv.com>, which currently redirects to its Gilead HIV YouTube channel page. The Complainant has, and others on its behalf have, registered approximately 200 domain names that incorporate the GILEAD trademark.
The disputed domain name was registered on March 30, 2014. The Complainant has provided screenshots taken on June 10, 2014, showing that the website to which the disputed domain name then resolved contained a number of sponsored links relating mainly to HIV treatments. The website to which the disputed domain name currently resolves appears to contain a number of sponsored links to kennel and boarding options for pets, and to resorts in Hawaii.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademarks because it incorporates the GILEAD trademark in its entirety and merely adds the non-distinctive and generic terms “hiv” and “resources”. These generic terms add no distinctive character to the Complainant’s trademarks, and actually increase the likelihood of confusion because they relate directly to the Complainant’s business, namely its HIV treatment products.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it was registered well after the Complainant registered its GILEAD and GILEAD SCIENCES trademarks and began operating its biopharmaceutical business under the GILEAD and GILEAD SCIENCES trademarks; (ii) the Respondent is not associated or affiliated with the Complainant, nor has the Complainant granted any rights to the Respondent to use the GILEAD trademark; (iii) it does not appear that the Respondent is commonly known by the GILEAD trademark; and (iv) the website to which the disputed domain name resolved contained sponsored advertising links which diverted Internet traffic to the Complainant’s competitors, and the Respondent is therefore using the Complainant’s trademark for its own commercial purposes.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because (i) the Respondent’s decision to register the disputed domain name, which contains the Complainant’s GILEAD trademark and adds non-distinctive and generic terms that are highly related to the Complainant’s business, cannot be mere happenstance given the Complainant’s well-known role in developing treatments for HIV; (ii) the Respondent has been using the Complainant’s trademarks with the intention of attracting to the Respondent’s website Internet users who expect to find a website operated or authorized by the Complainant; (iii) the Respondent registered and used the disputed domain name to create confusion with the Complainant’s trademarks for the purpose of deriving commercial gain in the form of revenue earned from pay-per-click sponsored links to one of the Complainant’s competitor’s website; and (iv) the website to which the disputed domain name resolved contained a statement saying that the domain name was for sale, and this has been found to be a clear indication of bad faith use by panels in other cases.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark GILEAD, with the addition of the non-distinctive and generic terms “hiv” and “resources”, and the generic Top-Level Domain (gTLD) identifier “.com”. The distinctive component of the disputed domain name is “gilead”, which is the Complainant’s trademark. The Panel finds the addition of the terms “hiv” and “resources” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is because “hiv” is a common abbreviation of “human immunodeficiency virus”, and one meaning of the word “resources” is “supplies, supports or aids”, and together these terms are descriptive of products and services provided by the Complainant under its GILEAD trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its GILEAD trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website which contained sponsored links to the Complainant’s competitors, and is now being used to resolve to a website which contains sponsored links to third parties’ services unrelated to the meaning of the terms comprising the disputed domain name. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered several years after the Complainant first registered its GILEAD trademark. The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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 <gileadhivresources.com> be transferred to the Complainant.
Andrew F. Christie
Date: September 3, 2014