WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Krug Jr Robert John
Case No. D2020-2662
1. The Parties
Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Krug Jr Robert John, United States.
2. The Domain Name and Registrar
The disputed domain name <gilead-sciences.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2020, 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 Complainant on October 15, 2020 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 15, 2020.
The Center verified that the Complaint together with the amendment to 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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2020.
The Center appointed Scott R. Austin as the sole panelist in this matter on December 3, 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 states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is one of the largest biopharmaceutical companies in the world, generating worldwide 2019 revenue of USD 22.4 billion and providing employment to over 12,000 people. Complainant develops, manufactures, and offers for sale over 25 pharmaceutical products, including products which prevent and treat HIV infection and cure hepatitis C.
Complainant’s products and services, which range from pharmaceutical medications to health information, education services, pharmaceutical research and charitable services, are identified by its GILEAD trademark incorporating the word element "gilead" (the “GILEAD Mark”). The GILEAD Mark is known and recognized for pharmaceutical products and medical information services as shown in Complainant’s evidence of unsolicited third-party articles and news sources submitted in the annexes to the Complaint. The GILEAD Mark has become even more known and recognized based on recent extensive media coverage of Complainant’s antiviral drug currently being studied as a treatment for COVID-19 and authorized for emergency use by the United States Food and Drug Administration.
Complainant owns exclusive rights to the GILEAD Mark through over 120 trademark registrations around the world for pharmaceutical products and scientific research services, including; United States Trademark Registration No. 3251595 for GILEAD, registered on June 12, 2007, covering “pharmaceutical preparations, namely, antivirals, antifungals and preparations for the treatment of infectious conditions” in Class 5; United States Trademark Registration No. 1611838 for GILEAD SCIENCES, registered on September 4, 1990, covering “pharmaceutical preparations for the treatment of viral diseases, such as AIDS and cancers, for professional medical use” in Class 5; European Union Trademark Registration No. 3913167 for GILEAD, registered on November 7, 2005 covering, among others, “pharmaceutical and veterinary preparations” in Class 5 and “scientific, medical and industrial research and development services, including such services provided on-line from a computer network or the internet” in Class 42; and China Registration No. 816124 for GILEAD, registered on February 21, 1996 covering “pharmaceuticals for the treatment and/or prevention of infectious diseases, cardiovascular and inflammatory conditions, degenerative disorders, and cancer” in Class 5.
The disputed domain name was registered on October 8, 2020 and redirects to the home page of Gilead’s official website (“Official Gilead Website”) accessed through Complainant’s domain name <gilead.com> at “www.gilead.com”.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the GILEAD Mark and the GILEAD SCIENCES trademark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The disputed domain name incorporates both Complainant’s GILEAD Mark, with the addition of a hyphen and the common term “sciences”, and thereby also incorporates Complainant’s registered GILEAD SCIENCES trademark in its entirety. Prior UDRP panels have found typographic differences, such as the inclusion or omission of hyphens and apostrophes are inadequate to avoid a finding of confusing similarity. See, e.g., L’Oreal v. Tracey Johnson, WIPO Case No. D2008-1721. Similarly, the addition of the Top-Level domain (“TLD”) “.net” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.
The Panel finds here that the disputed domain name incorporates Complainant’s registered GILEAD Mark in its entirety and is recognizable within the disputed domain name, and is essentially identical to its GILEAD SCIENCES registered trademark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts Respondent is not associated or affiliated with Complainant, nor has Complainant granted any rights to Respondent to use the GILEAD Mark, licensed it to sell any products or offer any services, nor granted any rights to register the disputed domain name. Complainant also asserts and there is nothing of record to show that Respondent is commonly known by the disputed domain name because Respondent clearly bears no resemblance to the term “gilead”.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Based on the evidence submitted of Complainant’s extensive use of the GILEAD Mark for over 30 years and its worldwide recognition in the news and trade journal articles, the Panel agrees with prior UDRP panels which have held such marks to be well-known. See, Celgene Corporation v. Diana Claire, WIPO Case No. D2016-0922; Gilead Sciences, Inc. v. Brandon Bomberg, Twin Cities Holdings, WIPO Case No. D2020-0613.
Given the well-known status of the GILEAD Mark, particularly in light of the recent news coverage of Gilead’s antiviral remdesivir currently being studied as a potential treatment for COVID-19, it is inconceivable that Respondent was not aware of Gilead’s rights in the GILEAD Mark when it registered the disputed domain name, and given the timing of the registration following such news coverage, more likely to have been registered to intentionally target Complainant’s GILEAD Mark in bad faith. See Celgene Corporation v. Diana Claire, WIPO Case No. D2016-0922.
Complainant contends Respondent in not using the disputed domain name in connection with a bona fide offering of goods and services because, as Complainant’s evidence shows, the disputed domain name redirects to Complainant’s Official Gilead Website, which suggests that Respondent plans to spoof, phish or spam third parties with an email address configured to the disputed domain name to Respondent’s commercial gain.
Respondent clearly acquired the disputed domain name with the intent of capitalizing on confusion created by the similarity of the disputed domain name and Complainant’s GILEAD Mark. Respondent’s disputed domain name appears to relate to Complainant, when in fact there is no such connection. Such use of a domain name based on Complainant’s GILEAD Mark for no conceivable purpose other than to promote activity unauthorized by Complainant and to trade upon the goodwill associated with Complainant is not a legitimate use. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; see also eSpeed Government Securities, Inc. and Aqua Securities, L.P. v. aqua-securities, WIPO Case No. D2007-1661.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant’s well-known GILEAD Mark is recognized and registered around the world, including the United States, where Respondent is located. The GILEAD Mark has been used to identify products and services provided to millions of consumers for over 30 years prior to Respondent’s registration of the disputed domain name in October 2020. It is implausible, therefore, to believe that Respondent was not aware of the GILEAD Mark when it registered the confusingly similar disputed domain name incorporating the GILEAD Mark, as determined in 6.A. above. Respondent is impersonating Complainant. Prior UDRP Panels have found bad faith on this basis alone. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Co. WIPO Case No. D2000-0878.
Further, as noted in 6.B., in the circumstances of this case, where Respondent registered the disputed domain name to engage in per se illegitimate activity, to intentionally target Complainant’s GILEAD Mark and capitalize on its fame following significant media coverage, the Panel finds such factors sufficient for this Panel to find bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Similarly, prior UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4. The totality of circumstances here, where: 1) Respondent’s disputed domain name redirects to Complainant’s Official Gilead Website and there can be no conceivable purpose for such action other than to hold such threat over Complainant of illegitimate use such as phishing confidential financial or research data from Complainant or its customers: 2) Respondent has intentionally registered a domain name consisting entirely of Complainant’s registered GILEAD SCIENCES trademark; 3) Respondent purposefully registered a domain name with such terms to divert Internet users; and 4) Respondent used a privacy shield to conceal the registrant of the disputed domain name; presents a combination of bad faith factors sufficient for the Panel to find bad faith use of the disputed domain name.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith. Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <gilead-sciences.net> be transferred to Complainant.
Scott R. Austin
Date: December 17, 2020