WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. Contact Privacy Inc. Customer 0161233037 / Name Redacted
Case No. D2021-3700
1. The Parties
Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.
Respondent is Contact Privacy Inc. Customer 0161233037, Canada / Name Redacted1.
2. The Domain Name and Registrar
The disputed domain name <gileadbiotech.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 8, 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 November 8, 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2022.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 19, 2022. 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, together with its affiliated companies (collectively “Complainant”) is a global biopharmaceutical company based in California, United States.
Founded in 1987, Complainant offers its pharmaceutical products and medical information servces under the GILEAD mark. Complainant owns several trademark registrations for the GILEAD mark. These include, among others, United States Registration No. 3,251,595 (registered June 12, 2007) and European Union Registration No. 3913167 (registered November 7, 2005).
Complainant owns the registration for numerous domain names that incorporate its GILEAD mark. These include <gilead.com> (registered May 27, 1995). Complainant uses the URL associated with this domain name to inform customers about its GILEAD mark and its various pharmaceutical products and related medical services.
The disputed domain name appears to have been registered on March 25, 2021. The disputed domain name resolves to a parked webpage. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the “famous and well-known” GILEAD mark, and that it enjoys a strong reputation in the biopharmaceutical industry globally, with about 14,500 employees and 2020 revenue of over 24 billion USD.
Complainant contends that Respondent has incorporated Complainant’s GILEAD mark into the disputed domain name, and merely added the dictionary term “biotech,” which describes Complainant’s products offered to consumers under its GILEAD mark. Complainant contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith including by using the disputed domain name presumably for Respondent’s own commercial gain, while providing “false contact” information intended to further confuse prospective consumers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <gileadbiotech.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered GILEAD mark, and merely adds the term “biotech.”
Further to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. The disputed domain name consists of Complainant’s trademark along with the term “biotech”, which is descriptive of Complainant’s services and industry, thus carrying a risk of implied affiliation to Complainant, contrary to the fact, which cannot constitute fair use. Further, noting the parked nature of the disputed domain name, Respondent is clearly not using the disputed domain name for any bone fide offering of services and has provided no response whatsoever to claim rights or legitimate interests. Respondent’s use of information belonging to an employee of Complainant is further indicative of a lack of rights or legitimate interests.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
As noted in Section 4 of this Panel’s decision, the disputed domain name resolves to a parked webpage, seemingly sponsored by a hosting provider and inviting Respondent to “do more with this domain”.
The non-use of the disputed domain name does not prevent a finding of bad faith in view of the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0. The Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s well-known pharmaceutical products offered under the GILEAD mark. See, Gilead Sciences, Inc. v. Super Privacy Service LTD c/o Dynadot. / Kolawole Feyisitan, WIPO Case No. D2020-3517 (finding Complainant’s GILEAD mark to be “long established, highly valuable and globally registered”). Furthermore, noting Respondent’s use of information belonging to an employee of Complainant and failure to submit any response, the Panel finds that the circumstances support a finding of bad faith registration and use. Considering the circumstances of the registration of the disputed domain name, and the construction of the disputed domain name itself, the Panel cannot conceive of any plausible good-faith use to which the disputed domain name may be put.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
For all 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 <gileadbiotech.com> be transferred to Complainant.
Dated: February 2, 2022
1 The Respondent appears to have used the name of an employee of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.