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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. James Milner

Case No. D2021-1602

1. The Parties

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

Respondent is James Milner, United States.

2. The Domain Name and Registrar

The disputed domain name <gileadsciencess.net> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, 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 May 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 1, 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 Respondent of the Complaint, and the proceedings commenced on June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2021.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 6, 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

Complainant Gilead Sciences, Inc. was founded in 1987 and is one of the largest biopharmaceutical companies in the world, with total worldwide revenue of approximately USD23.3 billion in 2020. Gilead develops, manufactures and offers for sale over 25 pharmaceutical products, including the experimental antiviral drug remdesivir, which has been approved for treatment of COVID-19 in the United States and elsewhere. Gilead, and its efforts to combat COVID-19, has been the subject of a number of unsolicited news articles in leading publications, on TV and on radio.

Complainant owns over 120 trademark registrations around the world for the GILEAD and GILEAD SCIENCES trademarks. It also owns the domain name <gilead.com>.

The disputed domain name, <gileadsciencess.net>, was registered on April 26, 2021, and reverts to a website that has no content, apart from a page stating that the website in unavailable.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is identical and confusingly similar to Complainant’s GILEAD and GILEAD SCIENCES trademarks. Complainant notes that the disputed domain contains the term GILEAD in its entirety, merely adding a misspelling of the term “sciences” by adding an additional letter “s” at the end of the word and the top-level domain “.net.”

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent is not associated or affiliated with Complainant and has not granted any rights to Respondent to use the GILEAD mark. Further, there is no indication that Respondent is commonly known by the domain name in issue or that Respondent is making bona fide use of the domain name.

With respect to the issue of bad faith registration and use, Complainant alleges that Respondent’s acts “overwhelmingly” meet this element of the Policy. Complainant contends that Respondent intentionally registered a domain name consisting solely of the GILEAD SCIENCES trademark with a typo, purposefully registered a domain name with search terms to divert Internet users, and used a privacy shield to conceal Respondent’s information, all in the context of Gilead’s famous trademark and longstanding use.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <gileadsciencess.net>, for all intents and purposes, is identical to Complainant’s GILEAD SCIENCES trademark. The domain name incorporates in full Complainant’s mark, adding only an additional letter “s” to the term “sciences” as well as the top-level domain “.net.” Neither the addition of the top-level domain nor the act of typosquatting through the misspelling of the term “sciences” defeats a finding that the domain name is, for all intents and purposes, identical to Complainant’s GILEAD SCIENCES trademark. (A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview, section1.9.) (“It is well-established in decisions under the UDRP that generic Top-Level Domain indicators…may be considered irrelevant in assessing confusing similarity between a trademark and a domain name.” See Philip Morris USA Inc. v. Sakaria Mohamound Mussafah, WIPO Case No. D2014-1667.)

The domain name is also confusingly similar to Complainant’s GILEAD trademark insofar as it incorporates in full the distinctive term “Gilead,” adding only a misspelling of the descriptive term “sciences,” as well as the “.net” top-level domain.

The Panel further determines that Complainant has rights in the GILEAD and GILEAD SCIENCES trademarks. The evidence establishes that Complainant owns registrations for the GILEAD and GILEAD SCIENCES marks and has used such marks for over 30 years.

B. Rights or Legitimate Interests

The Panel concludes that Complainant has met its burden of proof in establishing that Respondent has no rights or legitimate interests in the disputed domain name. As stated by another panel, in view of the widespread use and publicity associated with the GILEAD and GILEAD SCIENCES marks, one “cannot conceive of any potential use of the disputed domain name … that could be bona fide or would not conflict with the Complainant’s legitimate use of its trademark.” See Gilead Sciences, Inc. v. Super Privacy Service LTD c/o Dynadot/Kolawole Feyisitain, WIPO Case No. D2020-3517.

There is also no evidence that Respondent is commonly known by the disputed domain name. As noted by Complainant, the Gilead name does not appear in the WhoIs record, which offers no way to contact Respondent.

Finally, insofar as the disputed domain name resolves to a website which offers no content, Respondent clearly is not making a fair or noncommercial use of the domain name.

C. Registered and Used in Bad Faith

The Panel holds that the disputed domain name was registered and is being used in bad faith. While Respondent’s actions do not fall squarely within any of the circumstances spelled out in the Policy (which are not intended to be exhaustive of the circumstances that may be give rise to a finding of bad faith registration and use), Respondent’s actions clearly satisfy this element of the Policy. As noted above, the disputed domain name incorporates in full Complainant’s marks. The addition of a typo in the domain name lends further support to a finding of bad faith. (Panels will normally find that employing a misspelling signals an intention on the part of the respondent to confuse users seeking or expecting the complainant. See WIPO Overview, section1.9.)

Moreover, the Panel is aware that, during the COVID-19 pandemic, which is still raging throughout most of the world, Complainant has been the subject of numerous media reports, particularly with respect to the efficacy of its drug remdesivir. Respondent was undoubtedly aware of this fact at the time the disputed domain name was registered. The domain name was registered only a few months ago, on April 26, 2021. In view of the severity of the pandemic, the Panel finds that Respondent’s actions in registering the disputed domain name particularly egregious.

While Respondent is merely making passive use of the disputed domain name, under the circumstances presented, such fact does not defeat a finding of bad faith use. Given the reputation of Complainant’s GILEAD and GILEAD SCIENCES marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, Respondent’s concealing its identity, and the implausibility of any good faith use to which the domain name may be put, the Panel finds that the disputed domain is being used in bad faith. See WIPO Overview, section 3.3.

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 disputed domain name <gileadsciencess.net> be transferred to the Complainant.

Jeffrey M. Samuels
Sole Panelist
Date: July 14, 2021

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