The Complainant is Gilead Sciences Ireland UC, Ireland and Gilead Sciences, Inc., United States of America, internally represented.
The Respondent is Domain Maybe For Sale c/o Dynadot, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On April 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 2019, 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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on June 12, 2019. 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 Foster City, California. The Complainant discovers, develops, and commercializes innovative therapeutics in areas of unmet medical needs that improve patient care.
The Complainant is the owner of a number of trademark registrations, including inter alia, the following trademark registrations: Ireland registration No. 249773 for the trademark DESCOVY, registered on November 1, 2013, covering “pharmaceuticals” in Class 5. United States registration No. 4876632 for the trademark DESCOVY, registered on December 29, 2015 in Class 5.
The date of the Domain Name registration was confirmed by the Registrar to be January 16, 2019.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and provides statement that the Domain Name is for sale and shows an advertisement and click-through purchase mechanism offering the Domain Name for sale for USD 1,288. 5. Parties’ Contentions A. Complainant
Upon receiving approval from the United States Food and Drug Administration on April 4, 2016, the Complainant launched the medication DESCOVY in the United States for treatment of HIV-1, in combination with other HIV-1 medicines. The Complainant’s medication sold under the well-known DESCOVY mark has become one of the most-prescribed medicines for HIV-1, accounting for 1.581 billion USD in sales in 2018. While the Complainant continued to study the “Descovy” medicine in clinical trials for a preventative indication known as “pre-exposure prophylaxis” or “PrEP,” the Complainant filed its first application to register the DESCOVY FOR PREP trademark in the European Union, and the Respondent filed for the Domain Name the same day after the Complainant’s application issued.
The Complainant’s priority in and to the fanciful DESCOVY trademark dates back to November 1, 2013, when it filed its first application for the trademark in Ireland. The Complainant owns exclusive rights to the fanciful/coined DESCOVY trademark, including rights secured through common law use and numerous registrations around the world and the Complainant owns registrations for the DESCOVY trademark in approximately 100 additional jurisdictions around the world and holds approximately 180 domain name registrations incorporating the DESCOVY trademark.
The Complaint contends that the opportunistic registration immediately after the Complainant filed the DESCOVY FOR PREP trademark application demonstrates the Respondent’s knowledge of the Complainant’s mark and the Respondent’s intent to personally benefit from registering the confusingly similar Domain Name. The Respondent is not making a non-commercial fair use of the Domain Name, which is evidenced by the fact that the Respondent is offering to sell the Domain Name for USD 1,288, a 250 times markup of the registration price. The Respondent’s attempt to hide behind privacy shields evidences the Respondent’s lack of a legitimate interest in and to the Domain Name. The Respondent’s sole intention in registering and using the Domain Name is to take advantage of the Complainant’s planned product extension for DESCOVY for the preventative PrEP indication, which the Complainant had been studying since July 22, 2016 in the “Discover” clinical trial, and which the Complainant filed for approval on April 5, 2019 after receiving positive clinical data. The obvious connection between the registration of the Domain Name and the Complainant’s product extension and trademark application cannot be interpreted with any legitimacy.
The Complainant argues that the Respondent’s registration and use of the Domain Name demonstrates bad faith in all of its acts to date, including: (i) intentionally including the Complainant’s well-known trademark of which the Respondent was aware; (ii) opportunistic registration upon public notice of the Complainant’s new trademark application; (iii) the Respondent’s offer to sell the Domain Name at a substantial premium; and (iv) the Respondent’s use of a privacy shield in the WhoIs record and private name to evade identification of the Respondent’s identity, and constitutes bad faith use and registration.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark DESCOVY in respect of pharmaceuticals. The Domain Name is confusingly similar to the well-known trademark owned by the Complainant. The addition of the descriptive elements “for” and “prep,” a known abbreviation for “pre-exposure prophylaxis” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The offer of the sale of the Domain Name in excess of its value and the registration of the Domain Name under a privacy shield registration are both evidence that the Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for DESCOVY.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the terms “for prep” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark DESCOVY and uses it for the purpose of taking commercial advantage of the Complainant’s brands in opportunistic bad faith.
The Panel is persuaded that the Respondent’s sole intention in registering and using the Domain Name is to take advantage of the Complainant’s planned product extension for DESCOVY for the preventative PrEP. The Panel agrees with the Complainant’s contention that the obvious connection between the registration of the Domain Name and the Complainant’s product extension and trademark application cannot be interpreted with any legitimacy. The Panel’s finding is consistent with the panel’s finding in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
In addition, the Panel’s finding that the Respondent’s registration of the Domain Name and offering it for sale – in this case in great excess of the price of the Domain Name– immediately following the Complainant’s European Union trademark application for DESCOVY FOR PREP follows the same opportunistic post-trademark filing domain cybersquatting technique and is consistent with multiple panels that found such to be bad faith use and registration. See Unipol Gruppo Finanziario S.p.A. v. Cenk Erdogan, Trnames Domain Name Services,WIPO Case No. D2016-1127 (transferring , where complainant’s EU trademark application for UNIPOLTOBE was filed the same day the domain was registered); Kleinwort Benson Group Limited and Société Générale v. Domain Administrator, See PrivacyG / Ryan Yu,WIPO Case No. D2016-2579 (transferring K, where complainant’s EU trademark application for KLEINWORT HAMBROS was filed the same day the domain was registered). See also CBS Broadcasting Inc. v. Rossi Hassad,WIPO Case No. D2000-1064 (transferring the domain, which was posted for sale on the website at the domain).
The Panel also finds that the Respondent’s registration through a privacy shield and its deliberate attempt to conceal its true identity is evidence of its bad faith use and registration. Groupe Auchan v. Parapharmacie Marche, Xavier Marche,WIPO Case No. D2014-0925; see also Trednet, Direct Distribution International Ltd (“DDI”) v. WhoisGuard namecheap / BODYPOWER,WIPO Case No. D2012-2001 (use of a privacy shield… once connected with additional elements… clearly points towards a registration and use in bad faith).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademark through a privacy shield registration and the offer for sale in excess of the value of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: June 13, 2019
Full & Egal Universal Law Academy