The Complainant is Gilead Sciences, Inc. of Foster City, California, United States of America, represented by Jack Wessel, United States of America.
The Respondent is Name Redacted of Birmingham, Alabama, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2015. On October 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2015, 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 October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 10, 2015.
On October 28, 2015 and October 30, 2015, the Center received an email communication from a representative of the Respondent’s employer requesting the notification of Complaint be resent to it. On November 2, 2015, the Parties forwarded their communications to the Center indicating they both believed that the Respondent’s identity had been fraudulently used to register the disputed domain name.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 18, 2015. 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.
The Panel has reviewed correspondence between the Center, counsel for the employer of the individual named initially in this filing as a respondent, and the Complainant and has determined that in all likelihood that individual has been the victim of identity theft in connection with the registration of the disputed domain name. Particulaly pertinent in this determination was the email of November 2, 2015 from said counsel, vouching that said individual had no involvement in the registration. As is customary in these circumstances, the Panel will issue its decision without idenitfication of said individual, retaining from the original filing only that that person’s name has been redacted. Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See, Carrefour v. Name Redacted,WIPO Case No. D2015-1174; and Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788. 4. Factual Background
The Complainant is a large and well-respected United States of Amercia biopharmaceutical company whose worldwide sales exceed USD24 billion annually. The Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the trademark GILEAD SCIENCES (i.e., Registration No. 1611838; registered on September 4, 1990).
The Respondent is the owner of the disputed domain name , which was registered on August 23, 2015. The Respondent has used the disputed domain name in connection with an apparently fraudulent scheme to order various products and have the Complainant billed for the cost. 5. Parties’ Contentions Complainant
The Complainant is one of the world’s largest biopharmaceutical companies, with revenues of USD 24.8 billion in 2014. It has been in operation since 1987 and is listed as a top company in magazines such as Fortune, Barron’s, and Bloomberg BusinessWeek.
The Complainant has many valid registrations for its trademarks GILEAD and GILEAD SCIENCES. Both marks are well-known, and even famous, worldwide.
The disputed domain name contains the Complainant’s marks in their entireties and is confusingly similar to those marks, if not identical to them. The addition of the term “inc” is inconsequential in the analysis of similarity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated or affiliated with the Complainant, and the Complainant has granted the Respondent no permission or rights to use the Complainant’s marks. Instead the Respondent is using the disputed domain name for fraudulent activity.
The disputed domain name was registered and is being used in bad faith. The Respondent used the disputed domain name to create an email address – based upon the name of one of the Complainant’s employees — for the purpose of ordering printing products from legitimate suppliers. Presumably, under the Respondent’s scheme, the Complainant would recieve the bill for the products, which would be shipped to the Respondent’s mailing address. Moreover, the Respondent registered the disputed domain name under a deceptive name, Contact Privacy Inc., to hide the Respondent’s true identity, further evidence of bad faith. Finally, beyond the fraudulent activity noted above, the name is not in use, even more evidence of bad faith. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel shall find for the Complainant in this proceeding and order a transfer of the disputed domain name provided that the Complainant proves that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
The disputed domain name has been registered and is being used in bad faith. Identical or Confusingly Similar
The Complainant has furnished the Panel with clear evidence (Exhibit O to the Complaint) that the Complainant has a valid USPTO trademark registration for GILEAD SCIENCES, and thus the Panel finds that the Complainant has satisfied the ownership requirement in that mark for the purposes of Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”).
The Panel can see plainly that the disputed domain name nearly replicates the Complainant’s GILEAD SCIENCES mark, differing only in the deletion of the space between the mark terms and the addition of the term “inc”. As that latter term is an abbreviation for the word incorporated, which can be applied to the Complainant, as well as most large American companies, it thus does nothing to distinguish the disputed domain name from the Complainant’s trademark. Taking all of these circumstances into consideration, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. See, Philip Morris USA Inc. v. David Delman and Lori Wagner,WIPO Case No. D2013-2182 (finding that , among other disputed domain names, was confusingly similar to the PHILLIP MORRIS trademark); and Perseus Basic Books LLC v. Marco Facchiano / Green Marketing Inc.,WIPO Case No. D2008-1698 (where was found to be confusingly similar to the BASIC BOOKS mark).
As a result, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Rights or Legitimate Interests
In the Panel’s view, the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, due to the confusing similarity between the disputed domain name and the Complainant’s validly registered trademark and the lack of association, affilliation and/or contractual agreements between the parties. Therefore, it is incumbent upon the Respondent to rebut that prima facie case in order to prevail as to this element of the Policy. See,Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”).
The Respondent has failed to file a Response in this case, and the Panel will take appriopriate notice of that failing in its analysis as to whether there is any reasonable rebuttal available to the Respondent. See, RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true...”).
Clearly, there is no reason for the Panel to conclude that the Respondent is or was commonly known by the disputed domain name as there is no evidence in the record connecting the Respondent with any semblance of the terms in that name. Accordingly, Policy paragraph 4(c)(ii) is found to be inapplicable to this case.
Furthermore, the Panel determines that Policy paragraphs 4(c)(i) and 4(c)(iii) are likewise inapplicable, because the Panel accepts the Complainant’s supported (Exhibits H through N of the Complaint) and uncontradicted assertion that the Respondent is using the disputed domain name in the furtherance of a fraudulent procurement scheme. Such activity constitutes neither a “bona fide offering of goods or services” nor “a legitimate noncommercial or fair use” of the disputed domain name. See, TVS Motor Company Limited v. Vistaprint Technologies Limited,WIPO Case No. DCO2014-0007 (finding that the creation of unauthorized email addresses associated with a disputed domain name does not qualify as a bona fide offering of goods or services); and Graybar Services Inc. v. Lawrence Giglio, Grssbar Electric Inc.,WIPO Case No. D2009-0993.
As a result, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
In considering this Policy element, the Panel notes that a finding of bad faith registration and use of the disputed domain name is not restricted to alignment with the circumstances set forth in Policy paragraph 4(b). See, Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and ,WIPO Case No. D2009-0266 (“The above four circumstances [Policy paragraph 4(b)] are not exclusive and bad faith may be found by the Panel alternatively.”).
In this case, there are plenty of circumstances that do not fit neatly into Policy paragraph 4(b), but are clearly indicative of bad faith in the Panel’s opinion. First, the Respondent has used a deceptive name in registering the disputed domain name. Second, the disputed domain name is not being used to host a website or for any other outwardly legitimate purpose. Third, and most egregious, the Complainant has submitted compelling evidence that the Respondent is using the disputed domain name to issue fake emails to elicit the shipping of various items to the Respondent, for which the Complainant would be left to foot the bill. With all of these circumstances in mind, the Panel cannot but decide that the disputed domain name was registered and is being used in bad faith. See, for example, Colas v. Benjamin Bouillot,WIPO Case No. D2015-0925: and BHP Billiton Innovation Pty Ltd. v. AC International Group Corp / Robert Robins / Whois Privacy Protection Service, Inc.,WIPO Case No. D2012-2065 (“The Respondent also uses the Disputed Domain Name in bad faith because it has used an email address connected to it in order to contact a third party, thereby creating the misleading impression that such email originated from an employee of the group of companies to which the Complainant belongs which is not true”).
As a result, the Panel finds that the Complainant has established that the disputed 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 disputed domain name be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: December 2, 2015
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