WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. Main Contact
Case No. D2020-0776
1. The Parties
Complainant is Gilead Sciences, Inc., United States of America (“United States” or “U.S.”), represented internally.
Respondent is Main Contact, United States.
2. The Domain Name and Registrar
The disputed domain name <coronagileadsciences.com> (the “Domain Name”) 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 March 31, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2020.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 28, 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
Complainant, founded in 1987, is an international biopharmaceutical company. Complainant discovers, develops, and commercializes innovative medicines in areas of unmet medical need. For example, Complainant sells products which prevent and treat HIV infection and products which cure hepatitis C.
In 2018, Complainant’s total worldwide revenue was approximately USD 22.1 billion. Complainant is regularly listed in the Fortune 500 Companies and Forbes’ World’s Best Employers rankings. It is a member of the S&P 500 and employs over 12,000 individuals worldwide. Complainant has been the subject of hundreds of news articles in such well-known publications as the New York Times, Wall Street Journal, Washington Post, and national television and radio networks.
Complainant owns over 120 trademark registrations around the world for or including GILEAD including U.S. Reg. No. 3,251,595, registered on June 12, 2007 (“GILEAD”) (The “GILEAD Mark”) and U.S. Reg. No. 1,611,838, registered on September 4, 1990 (“GILEAD SCIENCES”) (the “GILEAD SCIENCES Mark”) (collectively, “the Marks”). It also owns the domain name <gilead.com>, which was registered on May 27, 1995, and has been used by the company since as early as 1997 in connection with its pharmaceutical products and related medical services. Gilead and others on its behalf have registered over 340 domain names that incorporate the GILEAD Mark.
The Domain Name was created on March 13, 2020. It does not resolve to an active website, rather it resolves to a registrar-sponsored parking page which includes links using pharmaceutical terms (e.g., “Hiv Treatment” and “Hiv Drugs”) and competitors of Complainant (e.g., Novartis, Merck).
5. Parties’ Contentions
Through longstanding use and the success of its products, the Gilead name has gained significant recognition in the United States and throughout the world. In the wake of the COVID-19 pandemic, Gilead has become more well known because of the media coverage related to its experimental antiviral drug remdesivir, which is currently being studied in China and the United States as a treatment for COVID-19.
The Domain Name contains Complainant’s well-known and famous GILEAD Mark. This in itself is sufficient to support a finding that the Domain Name is confusingly similar to the Mark. Respondent willfully adopted the GILEAD Mark for the Domain Name in an attempt to unfairly capitalize on the valuable goodwill Complainant has built in the Mark, with the intention of diverting search and web traffic for Respondent’s own commercial gain.
Respondent registered the Domain Name over thirty years after Complainant entered the biopharmaceutical industry. The addition of the term “corona”, which is a common abbreviation for the novel coronavirus COVID-19 currently causing a global pandemic, does not help distinguish the Domain Name from Complainant’s GILEAD Mark. In fact, the addition of the term only increases the likelihood of confusion due to Complainant’s experimental antiviral drug remdesivir.
Respondent is not associated or affiliated with Complainant. Complainant has not granted any rights to Respondent to use the GILEAD Mark, whether a license to sell any products or offer any services, or any rights to register the Domain Name. There is no indication that Respondent is commonly known by the GILEAD Mark which does not appear in the WhoIs record. Respondent has no rights or legitimate interests in the Domain Name. Respondent’s diversionary registration and use of the Domain Name does not represent a bona fide offering of goods or services pursuant to the Policy nor does it constitute a legitimate noncommercial or fair use under the Policy. Respondent’s strategy for registering the Domain Name to capture and divert Internet search engine queries made by individuals seeking Complainant’s genuine pharmaceutical products or medical information is clear on its face based on the registration of a domain name containing the entirety of the GILEAD SCIENCES Mark and the term “corona”, which is a common abbreviation for novel coronavirus COVID-19. The Mark is so well known and recognized, there can be no legitimate use by Respondent.
Respondent had constructive knowledge of Complainant’s Marks and its rights due to Gilead’s longstanding worldwide trademark registrations covering the GILEAD Mark. Given the well-known and famous status of the GILEAD Mark, particularly in light of the recent news coverage of Complainant’s experimental antiviral remdesivir currently being studied as a potential treatment for COVID-19, Respondent was fully aware of Complainant’s rights in the GILEAD Mark when it registered the Domain Name. Respondent is fully aware of Complainant’s business, as well as its goodwill in the GILEAD Mark, and registered the Domain in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the Marks by virtue of the aforementioned United States trademark registrations.
The Domain Name <coronagileadsciences.com> incorporates in its entirety Complainant’s GILEAD and GILEAD SCIENCES Marks. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Adding the descriptive word “corona” and the generic Top-Level Domain (“gTLD”) “.com” after the Mark does not alleviate the confusion. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (holding that it is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). Adding the term “corona”, which is an abbreviation for the coronavirus COVID-19, affirms the risk of confusion due to Complainant’s work with the antiviral drug remdesivir, which is currently being studied as a treatment for COVID-19.
With regard to the gTLD “.com” in the Domain Name, it is common practice under the Policy to disregard generic Top-Level Domains (“gTLDs”) such as the “.com”, “.net”, and “.org” portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
On the evidence of record, it is uncontested that Respondent has no rights or legitimate interests in the Marks.
Complainant maintains: (1) Respondent is not associated or affiliated with it; (2) it has not granted any rights to Respondent to use the GILEAD or GILEAD SCIENCES Marks under a license to sell any products or offer any services, or to register the Domain Name; (3) there is no indication Respondent is commonly known by the GILEAD or GILEAD SCIENCES Marks; and (4) the Marks are so well known and recognized, there can be no legitimate use by Respondent. It appears Respondent’s strategy for registering the Domain Name is to capture and divert Internet queries made by individuals seeking Complainant’s genuine pharmaceutical products or globally-relevant and highly sought after important medical information.
Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name was only recently registered on March 13, 2020, years after Complainant began using the Marks and its U.S. trademark registrations for the GILEAD and GILEAD SCIENCES Marks issued (see U.S. Reg. No. 3,251,595, registered on June 12, 2007, and U.S. Reg No. 1,611,838, registered on September 4, 1990, respectively). The timing of the Domain Name registration coincides with recent news reports about the use of Complainant’s antiviral drug remdesivir for treating COVID-19 patients. Given Complainant’s international and long-standing use of the Marks, and the recent news reports, the Panel finds it is highly unlikely Respondent was unaware of Complainant and its GILEAD and GILEAD SCIENCES Marks when it registered the Domain Name <coronagileadsciences.com> containing the Marks in their entirety. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name: (1) was formed by adding the descriptive word “corona” to Complainant’s well-known Marks, which word relates to Complainant’s work on finding a treatment for the novel corona virus causing a pandemic – COVID-19; (2) is confusingly similar to Complainant’s Marks; and (3) Respondent has not shown any legitimate use for it. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
If Respondent believed it was making a good faith or fair use of the Domain Name, it could have advanced supporting evidence and arguments here, but neither has been presented to the Panel. This points to an opportunistic registration seeking to take advantage of a global crisis.
There is also no evidence Respondent actually used or contemplated a good faith use of the Domain Name. Respondent is passively holding a Domain Name that incorporates Complainant’s well-known Marks. There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Marks. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (finding bad faith when the registration of a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <coronagileadsciences.com> be transferred to Complainant.
Harrie R. Samaras
Date: May 5, 2020