WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. Super Privacy Service LTD c/o Dynadot / Kolawole Feyisitan
Case No. D2020-3517
1. The Parties
The Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Kolawole Feyisitan, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <gileadafrica.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 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 the Complainant on January 11, 2021, 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 January 12, 2021.
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 Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 24, 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 major biopharmaceuticals company, founded in 1987. The scale of its operations is illustrated by worldwide revenue in 2019 of about USD 22.4 billion and a ranking of 139th in the Fortune 500 list. The Complainant’s products including Biktarvy, Epclusa, Harvoni, Truvada and remdesivir are used in the treatment of variously HIV infection, hepatitis C and several other conditions. The Complainant employs over 12,000 people worldwide.
The Complainant has since 2014 held a wholly owned subsidiary in South Africa by the name of Gilead Sciences South Africa (Pty) Ltd, also known as Gilead Sciences Johannesburg, with its own website.
The Complainant owns some 125 registered trademarks worldwide, of which the following are representative for present purposes:
GILEAD, United States Patent and Trademark Office, registered on June 12, 2007, registration number 3251595, in class 5;
GILEAD, European Union trademark, registered on November 7, 2005, registration number 3913167, in classes 1, 5 and 42;
GILEAD, Republic of South Africa trademark, registered on June 27, 2012, registration number 2012/17167, in class 5;
GILEAD, Republic of Rwanda trademark, registered on July 22, 2004, registration number 5244/HRK, in class 5;
GILEAD, Morocco Intellectual Property and Commercial Office, registered on February 22, 2007, registration number 109108, in class 5;
GILEAD, Nigeria trademark, registered on June 7, 2011, registration number RTM 89033, in class 5.
The Complainant has also owned the domain name <gilead.com> since May 27, 1995, and has used it since 1997, and is represented in some 340 other domain names incorporating the trademark GILEAD.
Nothing of significance is known about the Respondent except for the contact details in Nigeria given in order to register the disputed domain name on June 9, 2020. The disputed domain name has either not resolved to anything, or has resolved to a landing page headed “Coming Soon: gileadafrica.com” and displaying 20 “related links”.
5. Parties’ Contentions
The Complainant contends that it owns and has rights in the registered trademarks listed in section 4, and has provided copies of the relevant registration documents.
The Complainant says its trademark is well known and famous and was first registered many years before the disputed domain name. The disputed domain name contains the Complainant’s trademark, which is sufficient for a finding of confusingly similarity with the trademark. The additional term “africa”, a geographical identifier, is not distinguishing and also increases the likelihood of confusion because the Complainant has a subsidiary in South Africa and extensively sells its products across Africa.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that the Respondent is not associated with the Complainant and has not been granted any right to use the Complainant’s trademark. There is no evidence the Respondent is known by the disputed domain name. The Respondent intends to attract Internet users searching for the Complainant by confusion with the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is so well known that there can be no legitimate use of it by the Respondent in the disputed domain name. The Respondent is trying to capitalise on the Complainant’s presence in Africa and its association with the antiviral drug Remdesivir. The Respondent had at least constructive knowledge of the Complainant’s trademark.
The Complainant says the Respondent is cybersquatting and can have no other purpose than to attract Internet users for commercial gain or to engage in phishing. The passive holding of the disputed domain name, without resolving to a website or resolving to a blank page, does not absolve the Respondent from a finding of use in bad faith.
The Complainant has cited previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns and has rights in the trademark GILEAD in many countries, including the Respondent’s stated domicile of Nigeria.
The disputed domain name <gileadafrica.com> may be interpreted clearly as the Complainant’s registered trademark GILEAD followed by the geographical identifier “africa”. In the circumstances, the prominent presence of the Complainant’s trademark is found to constitute confusing similarity and the additional geographical identifier “africa” is found not to prevent confusing similarity. It is well established that the generic Top-Level Domain (“gTLD”), in this instance “.com”, normally plays no part in the determination of confusing similarity.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has no association with the Complainant, has not been granted any right to use the Complainant’s trademark, and has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The Respondent has made no showing and has not asserted any rights or legitimate interests in the disputed domain name under paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Since the disputed domain name is not effectively in use, there is no evidence of its use for a bona fide offering of goods or service or any evidence of preparation for such use, and no evidence of noncommercial or fair use. The Respondent is not evidently known commonly by the disputed domain name.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are, however, without limitation, and bad faith may be found alternatively by the Panel.
Screen captures have shown the disputed domain name to resolve to either a blank page, or to an apparent parking page presumably provided by the Respondent’s relevant service provider headed “Coming Soon: gileadafrica.com”. That page also has a selection of seemingly random words commencing “Sales Wyeth Gsk Bible ...” under a subheading “Related Links”. The resolution to a blank page or to an essentially meaningless parking page may reasonably be interpreted as the disputed domain name being not in use and being passively held. Non-use, according to accompanying circumstances, may not preclude a finding of use of the disputed domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
It is not necessary to know the Respondent’s intention for the disputed domain name. On the totality of the evidence, the Respondent has registered the disputed domain name comprising the Complainant’s long established, highly valuable and globally registered trademark, with additional reference to “africa”, being a territory in which the Complainant actively conducts business. The Panel cannot conceive of any potential use of the disputed domain name, for either a website or an email address that could be bona fide or would not conflict with the Complainant’s legitimate use of its trademark. Furthermore, the Respondent has made no attempt to explain or to justify its registration of the disputed domain name. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
On the totality of the evidence, including the effective non-use of the disputed domain name and its incorporation of a famous registered trademark without conceivably plausible legitimate use, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used by the Respondent in bad faith in the terms of 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 <gileadafrica.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 2, 2021