WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences, Inc. v. JH Kang
Case No. DCO2020-0019
1. The Parties
The Complainant is Gilead Sciences, Inc., United States of America (“USA”), internally represented.
The Respondent is JH Kang, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <gileadcopay.co> 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 April 13, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 18, 2020. 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 biopharmaceutical company founded in 1987 in the USA. It is the owner of the domain name <gilead.com>, registered on May 27, 1995 as well as of the following, amongst others, trademark registrations (Annex L to the Complaint):
- USA trademark registration No. 3,251,595 for the word mark GILEAD, registered on June 12, 2007, in international class 5; and
- European Union Trade Mark registration No. 003913167 for the word mark GILEAD, registered on November 7, 2005, in international classes 1, 5 and 42.
The disputed domain name <gileadcopay.co> was registered by the Respondent on February 28, 2020 and presently resolves to a parked page displaying sponsored links.
5. Parties’ Contentions
The Complainant asserts to have ranked No. 139 in the Fortune 500 companies ranking in 2019 as well as to have had a total worldwide revenue of approximately USD 22.1 billion in 2018. The Complainant further asserts to be the owner of the well-known GILEAD trademark which it has used for decades in connection with innovative medicine and which has only become more well-known and famous in view of the extensive media coverage related to its experimental antiviral drug remdesivir, which is currently being studied as a treatment for COVID-19 (Annex J to the Complaint).
According to the Complainant, the disputed domain name incorporates the well-known and famous GILEAD trademark and the term “copay” which would be an abbreviation for copayment, a term used to describe the portion of the cost of a pharmaceutical product not covered by insurance and paid by the patients, what implies a direct association with the Complainant. The Complainant further asserts that the addition of the Top-Level Domain (“TLD”) “.co” is irrelevant in finding of confusing similarity. Therefore, the disputed domain name is confusingly similar to the Complainant’s GILEAD trademark.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not associated or affiliated with the Complainant; the Complainant has not granted any rights to the Respondent to use the GILEAD trademark, whether a license to sell any products or offer any services, or any rights to register the disputed domain name;
(ii) there is no indication that the Respondent is commonly known by the disputed domain name; and
(iii) the Respondent is using the disputed domain name to divert traffic and/or host sponsored listings, what does not characterize a bona fide offering of goods or services under the Policy.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent should have constructive knowledge of the Complainant, especially in view of the choice of the term “copay” which is relevant and related to the Complainant’s business, as well as considering the timing of the registration right after the Complainant received wide media coverage. Further, the disputed domain name resolves to a website with reference to sponsored listings. In addition to the above, according to the Complainant, the Respondent’s bad faith may also be corroborated by the lack of reply to the cease and desist letter sent by the Complainant (Annex P to the Complaint).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established rights in the registered GILEAD trademark.
The Panel finds that the disputed domain name <gileadcopay.co> reproduces the Complainant’s mark in its entirety, being the addition of the term “copay” and the “.co” TLD insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not associated or affiliated with the Complainant. Further, the Complainant has not granted any rights to the Respondent to use the GILEAD trademark, whether a license to sell any products or offer any services, or any rights to register the disputed domain name.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name.
Two other elements to be taken into account are the absence of any reply to the cease and desist letter sent to the Respondent and the use of the disputed domain name in connection with a parked page displaying sponsored links.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In this case, given that the distinctiveness and fame of the Complainant’s GILEAD trademark, the nature of the disputed domain name, and the recent news coverage of the Complainant’s antiviral remdesivir currently studied as a potential treatment for COVID-19, the Panel finds that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name.
Further, the use of the disputed domain name in connection with a parked website that displays links or pay-per-click advertisements characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s trademark. Such use, in this Panel’s view, constitute an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus unfairly capitalizing on the GILEAD trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Two other factors corroborate the finding of the Respondent’s bad faith conduct in this case: the Respondent’s lack of reply to the cease and desist letter (Annex P to the Complaint), and the use of a false address in the WhoIs data and, consequently, the Written Notice was not delivered to it.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The third element of the Policy has therefore been established.
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 <gileadcopay.co> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: May 28, 2020