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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Brandon Bomberg, Twin Cities Holdings

Case No. D2020-0613

1. The Parties

The Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented by Gilead Intellectual Property, United States.

The Respondent is Brandon Bomberg, Twin Cities Holdings, United States.

2. The Domain Names and Registrar

The disputed domain names (the “Disputed Domain Names”) <gilead-sciences.club>, <gileadsciences.club>, <gilead-sciences.online>, <gilead-sciences.site>, <gileadsciences.site>, <gilead-sciences.space>, <gileadsciences.space>, <gilead‑sciences.website>, <gileadsciences.website>, <gilead-sciences.xyz> and <gileadsciences.xyz> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 12, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 21, 2020. 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

Founded in 1987 in Foster City, California, the Complainant is one of the largest biopharmaceutical companies in the world. The Complainant discovers, develops and commercializes innovative medicines in areas of unmet medical need. Specifically, the Complainant has received approval to market 27 pharmaceutical treatments in the United States and maintains operations in the United States and numerous jurisdictions worldwide. The Complainant’s total worldwide revenue in 2018 was approximately USD 22.1 billion

The Complainant owns many trademarks in the United States through the United States Patent and Trademark Office (“USPTO”), including, but not limited to: GILEAD, United States Reg. No. 3251595, registered on June 12, 2007, in international class 5; GILEAD, United States Reg. No. 3665182, registered on August 4, 2009, in international classes 36 and 44. Moreover, the Complainant owns an additional 120 trademarks for the GILEAD trademark worldwide (collectively, the “GILEAD Mark”).

The Complainant owns dozens of domain names, including <gilead.com>, registered on May 27, 1995, and which has been used by the Complainant since 1997 in connection with its pharmaceutical products and related medical services.

The Disputed Domain Names were registered on December 11, 2019, and each of the 11 Disputed Domain Names resolves to the website “www.twincitiesinc.net”. The Complaint states that the resolving website displays the GILEAD Mark in connection with advertising for medical products along with unrelated phrases, photographs and blurbs that have nothing to do with pharmaceuticals or science and instead features random thoughts on real estate, religion, and advertising for the Respondent’s domain name services. As of the writing of this Decision, the resolving website features mainly religious teachings and references with some real estate-related information, but nothing on medical or pharmaceutical products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

- the Disputed Domain Names were registered and are being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Names transferred from the Respondent to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name are confusingly similar to the Complainant’s GILEAD Mark.

It is uncontroverted that the Complainant has established rights in the GILEAD Mark based on its many years of use as well as its registered trademarks for the GILEAD Mark in the USPTO and other jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the GILEAD Mark.

The Disputed Domain Name <gilead-sciences.club> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.club”. The Disputed Domain Name <gileadsciences.club> consists of the GILEAD Mark followed by the descriptive word “sciences”, and followed by the gTLD “.club”. The Disputed Domain Name <gilead-sciences.online> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the gTLD “.online”. The Disputed Domain Name <gilead-sciences.site> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the gTLD “.site”. The Disputed Domain Name <gileadsciences.site> consists of the GILEAD Mark followed by the descriptive word “sciences”, and followed by the gTLD “.site&rdquo The Disputed Domain Name <gilead-sciences.space> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the gTLD “.space”. The Disputed Domain Name <gileadsciences.space> consists of the GILEAD Mark followed by the descriptive word “sciences”, and followed by the gTLD “.space”. The Disputed Domain Name <gilead-sciences.website> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the gTLD “.website” . The Disputed Domain Name <gileadsciences.website> consists of the GILEAD Mark followed by the descriptive word “sciences”, and followed by the gTLD “.website”. The Disputed Domain Name <gilead-sciences.xyz> consists of the GILEAD Mark followed by the descriptive word “sciences” connected by a hyphen, and followed by the gTLD “.xyz”. The Disputed Domain Name <gileadsciences.xyz> consists of the GILEAD Mark followed by the descriptive word “sciences”, and followed by the gTLD “.xyz”.

The Panel concludes that based on the above, the Disputed Domain Names are confusingly similar to the GILEAD Mark in which the Complainant has rights. Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International, Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same).

Further, although the Disputed Domain Names <gilead-sciences.club>, <gilead-sciences.online>, <gilead‑sciences.site>, <gilead-sciences.space>, <gilead-sciences.website>, and <gilead-sciences.xyz> contain a hyphen between the words “gilead” and “sciences”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).

Finally, the addition of a gTLD such as “.xyz”, “.website”, or “.space” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in those domain names. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its GILEAD Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Names for commercial gain as part of scheme to deceive the Complainant’s customers into believing that the website created by the Respondent belongs to or is sponsored by the Complainant. Further, the Respondent’s unauthorized registration and use of the Disputed Domain Names to create a website containing images and references unrelated to the Complainant’s pharmaceutical and medical products does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy.

Finally, where a respondent has registered and is using domain names in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy.

First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s GILEAD Mark. The Panel finds that the Respondent registered the Disputed Domain Names to attract customers to its website by using domain names that are confusingly similar to the Complainant’s GILEAD Mark. The use of domain names to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.

Second, the registration of the Disputed Domain Names reproducing in their entirety the registered trademark of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products from its genuine website as well as to prevent the Complainant from registering the Disputed Domain Names. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith.

Third, depending on the circumstances, bad faith may be found where the respondent knew or should have known of the registration and use of the complainant’s mark prior to registering the disputed domain names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names 30 years after the Complainant first established the company, and at least a decade after the Complainant registered and used the GILEAD Mark, during which time the Complainant enjoyed a high degree of fame for its pharmaceutical goods and services.

Finally, the registration of domain names that are confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Names in bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant

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 <gilead-sciences.club>, <gileadsciences.club>, <gilead-sciences.online>, <gilead-sciences.site>, <gileadsciences.site>, <gilead-sciences.space>, <gileadsciences.space>, <gilead-sciences.website>, <gileadsciences.website>, <gilead-sciences.xyz>, and <gileadsciences.xyz> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: April 29, 2020

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