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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Paul Berressem

Case No. D2020-3256

1. The Parties

The Complainant is Gilead Sciences, Inc., United States of America (“U.S.”), internally represented.

The Respondent is Paul Berressem, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <gilead-covid-19.com> (the “Domain Name”) is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

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 December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 27, 2021. 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 is a large global biopharmaceutical company. The Complainant discovers, develops and commercializes medicines and offers for sale over 25 pharmaceutical products. The Complainant’s worldwide revenue in 2019 was approximately USD 22.4 billion, and the Complainant was listed as 139th in the Fortune 500 Companies rankings. The Complainant employs over 12,000 individuals worldwide.

The Complainant owns exclusive rights to the GILEAD trademark, including over 120 trademark registrations around the world, such as U.S. reg. no. 3,251,595, registered on June 12, 2007, and European Union Trade Mark (“EUTM”) reg. no. 3913167, registered on November 7, 2005. The Complainant owns the domain name <gilead.com> registered on May 27, 1995, together with more than 340 domain names that incorporate its GILEAD trademark.

The Domain Name was registered on November 6, 2020. At the time of drafting the Decision, the Domain Name resolved to a website offering web design services.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations and argues that its trademark is famous. The Complainant also argues that the addition of the term “COVID-19” does not help distinguish the Domain Name from Complainant’s trademark. In fact, the addition only increases the likelihood of confusion.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Complainant’s trademark is so well known and recognized, there can be no legitimate use by the Respondent. The Respondent’s attempt to conceal its identity is according to the Complainant further evidence the Respondent’s lack of a legitimate interest in the Domain Name.

The Complainant believes that the Respondent at the very least had constructive knowledge of the Complainant’s trademark, and that the Respondent most likely was fully aware of the Complainant’s rights in the GILEAD name when the Respondent registered the Domain Name. In view of the notoriety of the Complainant, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the Domain Name. The Complainant argues that the Respondent has purposefully registered the Domain Name to divert Internet users.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark GILEAD. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name reproduces the Complainant’s trademark with the addition of “covid-19”. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Complainant’s trademark is well known, and the Panel cannot perceive any possible legitimate use by the Respondent. The Respondent’s attempt to conceal its identity is further evidence of the Respondent’s lack of a legitimate interest.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Domain Name is confusingly similar to the Complainant’s well-known trademark. The Panel finds on the balance of probability that the Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel notes the composition of the Domain Name, and agrees with the Complainant that it is not possible to conceive a plausible circumstance in which the Respondent could have registered and legitimately use the Domain Name without a risk of the Domain Name being affiliated with the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s mark.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

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 Domain Name <gilead-covid-19.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: January 29, 2021

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