WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kite Pharma, Inc. v. Arturo Pereira, Interactive, LLC

Case No. D2021-2900

1. The Parties

Complainant is Kite Pharma, Inc., United States of America (“United States”), internally represented.

Respondent is Arturo Pereira, Interactive, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <kitepharma.info> 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 September 2, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 Complainant on September 13, 2021, 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 September 13, 2021.

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 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. Respondent sent an email communication on October 12, 2021. Accordingly, the Center notified Parties with Commencement of Panel Appointment Process on November 10, 2021.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 22, 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 is a biopharmaceutical company that develops cancer immunotherapy products. Complainant was founded in 2009, and in 2020 sales of Complainant’s YESCARTA product exceeded USD 500,000,000 and sales of Complainant’s TECARTUS product exceeded USD 40,000,000. The Complaint states that Complainant “owns exclusive rights to the KITE and KITE PHARMA trademarks, including rights secured by over 157 trademark applications and 120 registrations for the KITE, KITE PHARMA and KITE and Design marks around the world across 57 countries”. The Annexes attached to the Complaint contain a number of certificates of registration for such marks, with registration dates going back at least as early as July 21, 2015 (e.g., European Union Trade Mark Reg. No. 13843206). The disputed domain name was registered on August 20, 2021. As of September 1, 2021, the disputed domain name led to a web page that purported to be associated with “gamida Cell” – a company in the same industry as Complainant – and the web page requested the visitor’s work email address.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name contains Complainant’s KITE and KITE PHARMA marks, and therefore is confusingly similar to those marks. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name in that Respondent is not associated or affiliated with Complainant, Complainant has not granted any rights to Respondent to use the KITE or KITE PHARMA marks, there is no indication that Respondent is commonly known by KITE, Respondent is using the KITE trademark to divert Internet traffic for commercial gain or for a scam or phishing scheme, Complainant’s use of the KITE trademark allegedly predates Respondent’s use by more than 10 years, Complainant’s marks allegedly are well known in the pharmaceutical industry, and Respondent’s alleged knowledge of Complainant’s marks at the time Respondent registered the disputed domain name. Complainant also asserts that Respondent registered and is using the disputed domain name in bad faith, in that the disputed domain name consists solely of the KITE PHARMA trademark (with the “.info” generic Top-Level Domain (“gTLD”) appended to the end), Respondent allegedly registered the disputed domain name with the intent to divert Internet users, Respondent allegedly used a privacy shield to conceal Respondent’s contact information, Complainant allegedly has longstanding rights in the KITE and KITE PHARMA marks, the website associated with the disputed domain name leads to a login page for a company in the same industry as Complainant, Complainant allegedly reached out to that company and that company responded that it was not aware of the disputed domain name and did not authorize anyone to use the disputed domain name, and Respondent allegedly had actual or constructive knowledge of Complainant’s KITE mark and Complainant’s business due to (i) Complainant’s worldwide registrations for the mark, (ii) the alleged well-known status of the mark in the pharmaceutical industry, (iii) the similarity of the disputed domain name to the mark, and (iv) the use of “pharma” in the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions. However, Respondent sent an email communication on October 12, 2021 stating that the disputed domain name was available for sale at GoDaddy, without specifying any proposed sales price.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.

Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the KITE and KITE PHARMA marks.

The disputed domain name consists of the KITE PHARMA mark plus the “.info” gTLD. “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is identical to a mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. See similarly, Kite Pharma, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Ken Taylor, Thyssenkrupp Airport Systems, WIPO Case No. D2021-1096 (finding confusing similarity with respect to the domain <kite-pharma.com>).

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] 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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant asserts that Respondent is not associated or affiliated with Complainant, that Complainant has not granted any rights to Respondent to use the KITE or KITE PHARMA marks, that the WhoIs record for the disputed domain name does not identify Respondent as Kite or Kite Pharma, that Respondent is using the KITE or KITE PHARMA trademark to divert Internet traffic for commercial gain or for a scam or phishing scheme, that Complainant’s use of the KITE trademark predates Respondent’s use by more than 10 years, that Complainant’s marks are well known in the pharmaceutical industry, and that Respondent was aware of Complainant’s marks at the time Respondent registered the disputed domain name.

In the absence of some explanation from Respondent as to why “Kite Pharma” was chosen for the disputed domain name, it is not obvious why Kite Pharma would have been chosen for the disputed domain name other than to refer to Complainant. The use of the disputed domain name to point to a page referring to another company in the pharmaceutical industry, and the evidence that this activity was not authorized by the other company, further support Complainant’s allegations that Respondent registered the disputed domain name to refer to Complainant rather than to refer to Respondent. Thus, Complainant’s allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2020-3172 (finding a lack of rights or legitimate interests where “Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy”); Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510 (“The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services.”); Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO Case No. D2010-2204 (“Complainant asserts it has not authorized or licensed Respondent to use or register its CANTOR mark in the domain name. Although the WhoIs information identifies Respondent as ‘Cantor Index Limited’, the Panel finds no additional evidence that would provide a basis for finding that Respondent is commonly known by the domain name. … Complainant provided evidence that Respondent has a link at the website to an application form for allegedly opening an account with Respondent, which is used to harvest the confidential personal information of unsuspecting Internet users. This fraud, called phishing, cannot constitute a bona fide offering of goods or services. … Respondent clearly created the fraudulent site with the intent of capitalizing on confusion created by the similarity of the domain name and Complainant’s mark. Respondent’s domain name and website appear to relate to Complainant, when in fact there is no such connection. Such use of a domain name based on Complainant’s CANTOR mark to promote services unrelated to Complainant and to trade upon the goodwill associated with Complainant is not a legitimate use.”); Google Inc. v. Markus Weiler, Francotel Francophone Telecom, WIPO Case No. D2011-0921 (“There is no evidence in these Policy proceedings that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over ten years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to rebut this presumption”); Pfizer Inc v. CheapViagraStore, WIPO Case No. D2005-0159 (“Many Panels have concluded that it is not a legitimate use of the trademark to use it in a domain name to attract customers and re-direct them to competing products.”); WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”).

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or

(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that the disputed domain name consists of the full KITE PHARMA trademark, that Respondent allegedly registered the disputed domain name with the intent to divert Internet users to some type of scam that refers to another company in the pharmaceutical industry and seeks to collect users’ email addresses, that Complainant reached out to that company and that company responded that it was not aware of the disputed domain name and did not authorize anyone to use the disputed domain name, that Respondent allegedly used a privacy shield to conceal Respondent’s contact information, and that Complainant has longstanding rights in the KITE and KITE PHARMA marks and Respondent was aware of these rights at the time Respondent registered the disputed domain name. Respondent has not sought to controvert these allegations.

The disputed domain name consists of Complainant’s KITE PHARMA trademark with the “.info” gTLD appended to the end, and has been used to direct users to a site with the brand of another pharmaceutical company and to request email addresses from visitors. This use appears to be an effort to capitalize on the goodwill associated with Complainant’s mark, in order to attract Internet users to the site and gather their email addresses. This is being done without Complainant’s permission and without the permission of the other pharmaceutical company. Respondent offers no explanation for such registration and use. This satisfies the requirements of the Policy, paragraph 4(a)(iii).¹ See, e.g., WIPO Overview 3.0, section 3.4 (“use of a domain name for phishing or identity theft may constitute bad faith”); Kite Pharma, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Ken Taylor, Thyssenkrupp Airport Systems, WIPO Case No. D2021-1096 (“The Disputed Domain Name [<kite-pharma.com>] was registered many years after Complainant first registered and used its KITE and KITE PHARMA trademarks. The evidence on the record provided by the Complainant with respect to the extent of use of its KITE PHARMA trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s KITE PHARMA trademark, and knew that it had no rights or legitimate interests in the Disputed Domain Name. There is prima facie no reason for the Respondent to have registered the Disputed Domain Name containing a misspelling of the entirety of the KITE PHARMA trademark. … In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed Domain Name has been for illegitimate purposes. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.”); Celgene Corporation v. Diana Claire, WIPO Case No. D2016-0922 (“Respondent’s inclusion of a term, ‘pharma’, which refers to Complainant's filed of activity, puts beyond doubt whether Respondent has targeted Complainant.”).

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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, <kitepharma.info>, be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: December 6, 2021

¹ Regarding the allegation that Respondent used a privacy shield to conceal Respondent’s contact information, while it is true that the use of a privacy shield to hide the registrant’s identity can support a finding of bad faith, WIPO Overview 3.0, section 3.2.1, it is not clear on the facts of this case whether the Respondent actually sought to take advantage of a privacy shield or did so in bad faith. The Annexes attached to the Complainant include WhoIs information that reflects Respondent’s organization name and the state in which the organization is located, but that information does not reflect Respondent’s individual name nor does it contain further address or contact information. As WIPO has noted, changes to the European Union’s General Data Protection Regulation (“GDPR”) have resulted in some WhoIs searches now withholding contact information for domain name registrants. “https://www.wipo.int/amc/en/domains/gdpr"/ The registrar for the disputed domain name in this case is GoDaddy.com, LLC. By default, GoDaddy now masks WhoIs contact information unless the registrant changes their settings to allow their contact information to be shown in WhoIs. “https://www.godaddy.com/help/update-contact-information-for-domains-with-protection-2607” While there could be circumstances indicating that a registrant sought to take advantage of this state of affairs in order to conceal their identity, no evidence was presented in this case indicating that this is true here. Indeed, when GoDaddy unmasked Respondent’s contact information it became apparent that the information contains the correct address and phone number for Interactive, LLC. Accordingly, based on the record in this matter, the Panel does not find that Respondent used a privacy shield in bad faith. OTP Bank Nyrt v. Swamy Venkidu, WIPO Case No. D2020-3118 (“The Panel further finds the Complainant’s allegations that the Respondent has attempted to conceal his contact information in the WhoIs record, and that he provided false contact information on the website to which the disputed domain name resolved in 2018, to be misguided. As noted by the Respondent, the Respondent’s details in the registrar’s publicly-available WhoIs record appear to have been redacted for reasons relating to the implementation of the GDPR. The Respondent has provided historic WhoIs records showing that prior to May 2018, the Respondent’s name and contact information was disclosed in full in the WhoIs record for the disputed domain name.”).