WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Samuel Oliveira de Carvalho Matos

Case No. D2021-3041

1. The Parties

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

The Respondent is Samuel Oliveira de Carvalho Matos, Portugal.

2. The Domain Name and Registrar

The disputed domain name <gileadscience.xyz> (the “Domain Name”) is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 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 amendment to the Complaint on September 20, 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.

The Center appointed Ian Lowe as the sole panelist in this matter on October 20, 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 was founded in California, United States, in 1987. It is one of the largest and most successful biopharmaceutical companies in the world, developing and commercializing innovative medicines. It currently manufactures and sells over 25 pharmaceutical products, including its antiviral drug REMDESIVIR recently approved for treating COVID-19. In 2020, the Complainant’s worldwide revenue was approximately USD 24.3 billion; it employs around 14,500 people worldwide.

The Complainant is the proprietor of over 120 trademark registrations around the world comprising GILEAD and/or GILEAD SCIENCES, including United States trademark registration number 3,251,595 GILEAD registered on June 12, 2007; United States trademark registration number 1,611,838 GILEAD SCIENCES registered on September 4, 1990; and European Union trademark registration number 3913167 GILEAD registered on November 7, 2005.

The Domain Name was registered on July 27, 2021. It resolves to a GoDaddy webpage offering the Domain Name for sale for USD 949.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its GILEAD and GILEAD SCIENCES trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

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

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in its GILEAD and GILEAD SCIENCES trademarks, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the trademarks for over 30 years.

Ignoring the generic Top-Level Domain (“gTLD”) “.xyz”, the Domain Name comprises the entirety of the Complainant’s GILEAD trademark together with the word “science”, and is identical to the Complainant’s GILEAD SCIENCES trademark save for the omission of the last letter “s”. In the Panel’s view, these differences do not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks.

Accordingly, the Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has submitted prima facie evidence that the Respondent can have no rights or legitimate interests in respect of the Domain Name.

The Respondent has made no active use of the Domain Name in connection with a bona fide offering of goods or services, but has used it for a parking page offering the Domain Name for sale for a sum significantly in excess of typical out-of-pocket costs related to a domain name. In the Panel’s view, given especially the composition of the Domain Name which exactly reproduces (in the singular) one of the Complainant’s marks, such activity does not give rise to any rights or legitimate interests in respect of the Domain Name.

The Respondent has chosen not to respond to the Complaint and has accordingly failed to counter the prima facie case established by the Complainant.

In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is identical to the Complainant’s GILEAD SCIENCES trademark save only for the omission of the last letter “s”. Accordingly, the Panel is in no doubt that the Respondent had the Complainant and its rights in the trademark in mind when it registered the Domain Name, and that it did so with the intention of selling it to the Complainant or a competitor of the Complainant for a substantial sum.

The Panel cannot conceive of a legitimate use to which the Respondent could put the Domain Name. The Panel considers that the Respondent’s actions in registering a Domain Name virtually identical to the Complainant’s trademark, and offering it for sale at a substantial price, amounts to paradigm cybersquatting and bad faith registration and use for the purposes of paragraph 4(a) of the Policy.

In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.

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, <gileadscience.xyz> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: November 3, 2021