WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilead Sciences Ireland UC v. Carina Pavlova
Case No. DEU2017-0011
1. The Parties
The Complainant is Gilead Sciences Ireland UC of Carrigtohill, Ireland, represented by Merkenbureau Knijff & Partners B.V., Netherlands.
The Respondent is Carina Pavlova of Oerel, Germany.
2. The Domain Name, Registry and Registrar
The disputed domain name is <sovaldi.eu>. The Registry of the disputed domain name <sovaldi.eu> is the European Registry for Internet Domains ("EURid" or the "Registry"). The Registrar of the disputed domain name is eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 23, 2017. On November 23, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 27, 2017, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on December 1, 2017 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 7, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the "ADR Rules") and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the "Supplemental Rules").
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2017. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 30, 2018. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is a pharmaceutical company registered in Ireland. Its parent company, Gilead Sciences, Inc., develops and commercializes medicines, one of which is branded SOVALDI and is used to treat chronic hepatitis C infection in adults.
The Complainant is the owner of numerous trademark registrations for the mark SOVALDI in various jurisdictions. Those registrations include, for example, International Trademark number 1133053 for the word mark SOVALDI registered on August 22, 2012 for pharmaceuticals in Class 5 and designating a total of 75 jurisdictions including the European Union ("EU").
The disputed domain name was registered on July 19, 2017.
According to evidence exhibited by the Complainant, on November 21, 2017 the disputed domain name resolved to an active website at "www.sovaldi.eu". The website was headed: "SOVALDI. The life-saving cure for Hepatitis C which nobody can afford." It referred to alternative "generic versions of Sovaldi" and provided links to other websites including those described as "buyers clubs". These links included a link to a website at "www.fixhepc.com" which appeared to offer the facility to order products including "Generic Sovaldi" online. The Respondent's website also drew attention to the profits said to have been made by the Complainant.
5. Parties' Contentions
The Complainant provides evidence of the commercial reputation of its SOVALDI mark, including total sales attributable to the product of approximately USD 20 billion between 2013 and 2016. It submits that it has approximately 108 registrations for the mark SOVALDI worldwide in addition to approximately 100 domain names incorporating the mark including <sovaldi.com>. The Complainant also exhibits press coverage concerning the SOVALDI product.
The Complainant submits that the disputed domain name is identical or confusingly similar to a name in respect of which a right or rights are recognized or established by national and/or Community law. It relies on its International Trademark SOVALDI referred to above and contends that the disputed domain name is identical to that mark in its entirely, subject only to the country code Top-Level Domain ("ccTLD") ".eu" which is to be disregarded for the purposes of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that the Respondent has registered a false and non-existent residential address and does not therefore meet the General Eligibility Criteria for the registration of a ".eu" domain name. The Complainant also submits that it has never licensed the Respondent to use its SOVALDI mark, that the Respondent has no independent rights in that mark and has not been known by a name corresponding to it. The Complainant says that the name SOVALDI is a coined term that has no meaning other than to refer to its trademark and that the disputed domain name takes unfair commercial advantage of that mark. In particular, the Complainant submits that the Respondent is using the disputed domain name for the purposes of a website which attacks the Complainant and links to websites offering generic drugs which are competitive with the Complainant's product, as well as improperly use the term "Generic Sovaldi" when the correct name of the relevant generic product is "sofosbuvir".
The Complainant submits that the disputed domain name has been registered or is being used in bad faith. The Complainant repeats its allegations concerning false contact details and also contends that the Respondent is deliberately using its SOVALDI mark to create user confusion. The Complainant says that it is clear from the Respondent's use of the disputed domain name that it was aware of its mark SOVALDI and is using that mark to facilitate the sale of competing products. The Complainant adds that the Respondent's sales are in violation of EU regulatory and licensing laws.
The Complainant submits evidence that it satisfies the General Eligibility Criteria for the registration of a ".eu" domain name and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph B(11)(d)(1) of the ADR Rules, it is for the Complainant to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) that the domain name has been registered or is being used in bad faith.
The Complainant must establish that the above criteria are satisfied even in a case where no Response has been filed.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registered trademark rights for the name and mark SOVALDI which are effective inter alia within the EU. The disputed domain name is identical to that mark but for the ccTLD ".eu" which is to be disregarded for the purposes of assessing confusing similarity. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant's submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not disputed the Complainant's contentions. Furthermore, the Panel finds that the disputed domain name comprises the Complainant's mark SOVALDI in an unadorned form. Since the Complainant's mark consists of a coined term which has no meaning in commerce other than to refer to the Complainant's mark and product, the Panel finds that the Respondent's registration and use of the disputed domain name amounts to an impersonation of the Complainant and cannot therefore give rise to rights or legitimate interests on the Respondent's part. In the circumstances, the Panel concludes that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
C. Registered or Used in Bad Faith
While the above findings are sufficient to resolve this proceeding in favour of the Complainant, the Panel also finds on the facts that the Respondent registered the disputed domain name in the knowledge of the Complainant's mark SOVALDI and with the intention of taking unfair commercial advantage of that mark. The Panel further finds that the Respondent has used the disputed domain name to impersonate the Complainant and for the purposes of a website that attacks the Complainant and offers competing products for sale. The Panel also accepts the Complainant's evidence that the Respondent has provided false contact details in connection with the registration of the disputed domain name. The Panel therefore concludes in all the circumstances that the disputed domain name has been registered or is being used in bad faith.
For the foregoing reasons, in accordance with paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <sovaldi.eu>, be transferred to the Complainant.1
Steven A. Maier
Date: February 2, 2018
1 The remedy sought by the Complainant is the transfer, as the Complainant is located in Ireland, within the EU, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002.