WIPO Arbitration and Mediation Center
ADMINISTRATIVE P1NEL DECISION
Gilead Sciences, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Ling Ye, Shionogi Co. Ltd.
Case No. D2020-0731
1. The Parties
The Complainant is Gilead Sciences, Inc., United States of America (“United States” or “U.S”), internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ling Ye, Shionogi Co. Ltd., Australia.
2. The Domain Name and Registrar
The disputed domain name <gilead.health> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020 (together with an amended Complaint on March 30, 2020). On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2020, 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 April 1, 2020, and also a further amendment to the Complaint, on April 7, 20201
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 amended Complaint, and the proceedings commenced on April 9, 2020. The Complainant submitted a further amended Complaint on the same day. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Center received an email communication from the Respondent on April 24, 2020, suggesting it would like to explore settlement options. The email was passed to the Complainant. The Complainant responded by email communication to the Center on April 27, 2020 indicating that as the Respondent was unwilling to transfer the Domain Name and had made false statements about its identity, it was not possible to amicably settle the matter. The Respondent did not submit any formal response. The Center notified the Parties on May 5, 2020, that it would proceed to panel appointment.
The Center appointed Jon Lang as the sole panelist in this matter on May 12, 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
The Complainant, founded in 1987 in Foster City, California, is one of the largest biopharmaceutical companies in the world with total worldwide revenue in 2018 of approximately USD 22.1 billion. The Complainant discovers, develops and commercializes innovative medicines in areas of unmet medical need. It sells products which prevent and treat HIV infection and products which cure hepatitis C. The launch of the Complainant’s recently approved pharmaceutical product, BIKTARVY, was one of the most successful drug launches ever, with sales exceeding USD 4.7 billion in 2019. In the wake of the COVID-19 pandemic, the Complainant has become more well-known and famous as a household brand given extensive media coverage of its antiviral drug remdesivir, which is currently being studied as a treatment for COVID-19 in China and the United States.
The Complainant owns exclusive rights to the GILEAD trademark, including rights secured by over 120 trademark registrations around the world, including: GILEAD – U.S. Reg. No. 3,251,595, registered on June 12, 2007 and GILEAD – Australia Reg. No. 1132718, registered on March 13, 2013. The Complainant is also the owner of the domain name <gilead.com> (as well as many others), which was registered on May 27, 1995, and which has been used by the company since as early as 1997, in connection with its pharmaceutical products and related medical services.
The Domain Name <gilead.health> was registered on March 19, 2020 by the Respondent using a privacy registration service (WhoisGuard, Inc), albeit details of the underlying registrant were revealed by the Registrar as being Ling Ye of Shionogi Co. Ltd. The Respondent did enter into an exchange e-mails direct with the Complainant (which will be referred to below) but did not formally participate in these proceedings.
The Domain Name resolves to the Complainant’s home page at “www.gilead.com”.
5. Parties’ Contentions
The following is a brief summary of the main contentions of the Complainant.
The GILEAD brand is well-known and famous for pharmaceutical products and medical information services.
The GILEAD mark serves as a valuable identifier of the Complainant, as well as its various goods and services. Through longstanding use and the tremendous success of its products, the GILEAD name has gained significant recognition in the United States and throughout the world. Gilead has been the subject of hundreds of unsolicited news articles in such well-known publications as the New York Times, Wall Street Journal, Washington Post and national television and radio networks, thrusting the Complainant and the GILEAD brand into the limelight. The Complainant’s use of the GILEAD name for over 30 years is in itself evidence that the GILEAD mark is well known.
The Respondent has no connection to the Complainant and there is no legitimate reason for it to have registered the Domain Name containing the Complainant’s GILEAD mark and the generic Top-Level Domain (gTLD) “.health”, which is squarely within the Complainant’s area of focus as a biopharmaceutical company.
The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Domain Name contains the Complainant’s well-known and famous GILEAD mark. Incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar.
The Respondent willfully adopted the GILEAD name within the Domain Name in an attempt to unfairly capitalize on the valuable goodwill the Complainant has built in its mark, with the likely intention of confusing consumers, diverting traffic and possibly embarking on phishing activities.
The Respondent registered the Domain Name over thirty years after the Complainant entered the biopharmaceutical industry.
The addition of the gTLD such as “.health” is required and it is well established that this element of the Domain Name may be disregarded in assessing identicality or confusingly similarity. In the present case, the gTLD “.health” is directly related to the Complainant’s business and therefore only increases the confusing similarity between the Domain Name and GILEAD mark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent is not associated or affiliated with the Complainant. The Complainant has not granted any rights to the Respondent to use the GILEAD mark or to register the Domain Name.
There is no indication that the Respondent is commonly known by the GILEAD name (which does not appear in the WhoIs record).
The Respondent is using the Complainant’s trademark for its own commercial purposes, pointing the Domain Name to the Complainant’s own home page strongly suggesting that the Respondent plans to engage in a phishing scheme by which users receiving emails from the Respondent would be led to the Complainant’s own website. Internet users could expose personal information to the Respondent, who could then use such information for its own financial gain. The Respondent’s use of the Domain Name to divert traffic to a scam or phishing scheme does not represent a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Even if the Respondent were not engaging in a phishing scheme, the Respondent has no legitimate purpose in using the GILEAD mark together with the “.health” gTLD. The Complainant’s mark is so well known and recognized, that there can be no legitimate use by the Respondent. The Respondent’s cybersquatting can be for no purpose other than wrongfully diverting traffic for its own commercial gain and/or engaging in a phishing scheme, which is not a legitimate use of the Domain Name.
The Domain Name was registered and is being used in bad faith
The Respondent has registered the Domain Name which contains the well-known and famous GILEAD mark for some illegitimate purpose, possibly for phishing, spam or spoofing, or to divert search-based Internet traffic from the Complainant’s own website. The Respondent’s opportunistic bad faith is borne out at all levels, including its clear knowledge of the Complainant’s rights to and goodwill in the GILEAD mark.
The Complainant’s supplemental filing
The Complainant has submitted an amended Complaint April 9, 2020, reflecting further communications from the Respondent to the Complainant. This further submission was submitted after the Complaint had been notified to the parties and therefore should be considered as a supplemental filing. The Panel has decided to accept it in accordance with paragraph 10 of the UDRP Rules and the communications are described below.
On March 26, 2020, the Complainant received an email from […]@gmail.com in response to the original UDRP complaint filed the same day, stating:
“We registered the domain under privacy and anonymity with approval from the Gilead board for a purpose of developing a state of the art internal pharmaceutical management software, and to purchase the domain “www.doctor.com” (M&A).
I’m surprised you weren’t informed of this...
The health domain is pointed to the Gilead homepage because (since were on the same side here...) Gilead is the rightful trademark holder and owner of ”Gilead.health“.
The WHOIS information will be updated according shortly after development is complete, but not necessary at this point.. Allowing WIPO to transfer the rights now is pointless, because I’ll need access to the domain anyway later via Gilead’s ICAAN provider.”
The Complainant replied to the email on March 26, 2020, stating:
“Thanks so much for letting us know. No, we and our IT department were unaware of this, and the third party registration of a domain name containing GILEAD violates our internal policy.
What organization do you work with? And who is your contact here at Gilead?”
The Complainant received a reply from “[…]@doctor.com” on March 27, 2020 stating:
“Hi Cynthia, our contact at Gilead Sciences is Dr. M Riordan
The Respondent is making false statements about the Domain Name being registered with the Complainant’s consent. The Complainant’s Board of Directors has provided no outside party with authorization to register the Domain Name. The Respondent’s allegation that its contact at the Complainant is “Dr. M Riordan” is also clear evidence of bad faith: Dr. Michael Riordan was the Complainant’s founder but has not worked at the Complainant since 1997. Also, the Respondent did not provide a response to the question concerning the organization it represented.
It appears that the Respondent provided the Complainant with false information in response to the original Complaint in an attempt to incite the Complainant to withdraw the proceedings and leave the Domain Name with the Respondent.
The Respondent’s contact information listed with the registrar is further evidence of bad faith. The Respondent identifies as “Ling Ye” or “Shionogi co Ltd” with an address in Australia. “Shionogi Co” is a long standing Japanese pharmaceutical company and its website reveals that it does not have an Australian affiliate. Moreover, a search of Google Maps shows that the address is a residential address, not an office or industrial location.
On April 9, 2020 the Respondent sent the Complainant another email, signed “Dr. Ling” (rather than “Christian.” It stated:
As you have found a little more info about the domain applicant, and seeing that this will end up in dispute with your IP team about us using it for nefarious reasons - instead why don’t we begin formal negotiations for a cross patent/trademark licensing agreement.
We‘d ask you to formally request to be granted exclusive access to some Gilead’s patents (for within China only, under a state-owned Entity under your trademark Gilead Health - but will not be a subsidiary owned by the US parent). It will be a perpetual trademark license granted to us only. And in exchange for those rights, - we offer to produce your GS-5784 API intermediates on a mass scale and offer you the US/EU patent rights to those intermediates.
In light of the recent Covid19 outbreak, your Remdesivir synthesis is too complex and would take about 6 - 10 months at the very least to get to the market with barely enough precursors. If this proposal this within your power to get to the relevant please get back to us via this email and we’d draft a LOI before continuing further.
SHIONOGI CO CHINA”
The Respondent’s actions overwhelmingly demonstrate bad faith use and registration, for instance, registration of the Domain Name consisting solely of the GILEAD mark and gTLD “.health”, the pointing of the Domain Name to the Complainant’s website, the Respondent’s false statements in its emails and its bold request that the Complainant license its IP rights.
At the very least, the Respondent has constructive knowledge of the Complainant’s trademarks.
Given the well-known and famous status of the GILEAD mark, particularly in light of the recent news coverage of the Complainant’s antiviral drug remdesivir, the Respondent was fully aware of the Complainant’s business, its rights in the GILEAD name and goodwill in the GILEAD mark when it registered the Domain Name.
The use of a privacy service to register a disputed domain name can in itself indicate and support a finding of bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its GILEAD mark.
Ignoring the gTLD “.health” (as the Panel may do for comparison purposes), the Domain Name consists only of the GILEAD mark and nothing more.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The GILEAD mark is clearly recognizable within the Domain Name – the gTLD “.health” aside, it is the only element of the Domain Name.
The Panel finds that the Domain Name is identical to the GILEAD mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate non-commercial or fair use; the Domain Name resolves to the Complainant’s own website and no explanation has been provided as to why. Moreover, any noncommercial or fair use must be without intent to mislead yet the Domain Name, consisting only of the GILEAD mark, is inherently misleading in that it is likely to create a false impression either of association with the Complainant or that it actually belongs to the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Given the likelihood of a false impression being created by any use of the Domain Name by the Respondent, it is unlikely that any offering of any kind would be treated as bona fide.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The correspondence emanating from or on behalf of the Respondent referred to earlier suggests otherwise. The Respondent has not come forward with a formal Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of non-exclusive factual scenarios which may evidence a respondent’s bad faith. However, such scenarios are simply illustrative. To satisfy the bad faith requirement of the Policy, what is required is evidence demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark.
It is not clear what the Respondent had in mind when registering the Domain Name. What is clear for the Panel is that the Respondent knew of the Complainant and its GILEAD mark at the time of registration of the Domain Name and sought to mislead the Complainant as to its reason for registration by providing false information.
The Domain Name incorporates entirely the well-known GILEAD mark and any use of it would inevitably create a risk of misleading Internet users into believing that the Domain Name or any third party website to which it resolved, was in fact owned by the Complainant or the official website of the Complainant, or was somehow associated with the Complainant. Moreover, given the “.health” gTLD, the public could be lead to believe that the Domain Name, if used by the Respondent for email, is connected to an official emailing service of the Complainant. The Domain Name is inherently misleading and it is difficult to contemplate any legitimate use.
In any event, given the behavior of the Respondent (including its communications described in the supplemental filing), the Panel finds that the Respondent is taking unfair advantage of the Complainant’s trademark GILEAD.
One can only speculate as to the misuse the Domain Name could be put and why the Respondent would want to register such a Domain Name. It cries out for proper explanation, but none has been forthcoming.
No Response has been filed or evidence of actual or contemplated good faith use provided.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <gilead.health> be transferred to the Complainant.
Date: May 19, 2020
1 The Panel notes that the amendment relates to Mutual Jurisdiction clause in which the Complainant submits, with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the Domain Name, to the jurisdiction of the courts in the United States, the location of principal office of the Registrar.