Complainant is Gilead Sciences, Inc., United States of America (“United States”), internally represented.
Respondent is Whois Agent, Domain Protection Services, Inc., United States / Syed Hussain, IBN7 Media Group, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2020, 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 July 27, 2020 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 July 27, 2020. 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 August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 7, 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 Complainant is one of the largest biopharmaceutical companies in the world. Complainant employs over 11,000 individuals worldwide, and generated a total worldwide revenue of USD $22.1 billion in 2018. Complainant is a member of the S&P 500, is regularly listed in the Fortune 500 Companies and Forbes’ World’s Best Employers rankings and was recently ranked #139 in the Fortune 500 Companies rankings in 2019. Complainant has continually used the GILEAD trademark for more than thirty years in connection with various goods and services such as its pharmaceutical medications, health information and education services, and its pharmaceutical research and charitable services. Complainant owns various registrations for its GILEAD trademark, including United States registration number 3,251,595 (registered on June 12, 2007). Complainant also acquired exclusive rights to the FORTY SEVEN trademark after Complainant acquired Forty Seven, Inc., the mark’s original owner. The FORTY SEVEN trademark had been used by its original owner since March 2016 and was registered in the United States on May 14, 2019, registration number 1367188. Complainant is also the owner of the domain name The disputed domain name, Complainant alleges that the disputed domain name is confusingly similar to Complainant’s GILEAD and FORTY SEVEN trademarks because it reproduces identically and entirely the GILEAD and FORTY SEVEN marks. Complainant further alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated to Complainant in any way and was never licensed or authorized to use either of Complainant’s GILEAD or FORTY SEVEN marks. Furthermore, according to Complainant, Respondent cannot claim to have any rights or legitimate interest in the disputed domain name, because it merely diverts Internet users to a website soliciting offers of the disputed domain name for sale, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the GILEAD and FORTY SEVEN trademarks given the GILEAD mark’s worldwide notoriety, the complete incorporation of both marks in the disputed domain name, the existence of active trademark registrations in the United States for Complainant’s GILEAD and FORTY SEVEN marks and Respondent’s registration of the disputed domain name on the very same day Complainant announced its acquisition of Forty Seven, Inc. According to Complainant, Respondent’s use of a privacy shield in this context is further evidence of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the GILEAD and FORTY SEVEN marks through its United States registration for the GILEAD mark and the United States registration for the FORTY SEVEN mark owned by its wholly owned subsidiary, Forty Seven, Inc. With Complainant’s rights in the GILEAD and FORTY SEVEN marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s GILEAD and FORTY SEVEN marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Here, Complainant’s GILEAD and FORTY SEVEN marks are fully and identically incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is identical or confusingly similar to Complainant’s GILEAD and FORTY SEVEN marks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, 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, even if it has acquired no trade mark 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 trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the GILEAD or FORTY SEVEN marks in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name because it merely resolves to a page advertising the disputed domain name for sale and soliciting offers. Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can also be found if a respondent is shown to have registered the domain 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. Generally speaking, circumstances indicating that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark may include: respondent’s likely knowledge of the complainant’s rights, the distinctiveness of the complainant’s mark, the nature of the domain name (e.g., whether a typo of a famous mark or a domain name wholly incorporating the relevant mark plus a geographic term), a pattern of abusive registrations by the respondent, a respondent’s past conduct or business dealings, among others. WIPO Overview 3.0, section 3.1.1. In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the GILEAD and FORTY SEVEN marks that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the GILEAD and FORTY SEVEN trademarks when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s GILEAD and FORTY SEVEN marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the well-known GILEAD mark, meaning that bad faith registration of the disputed domain name can be presumed. That the disputed domain name was registered on the same day Complainant announced its acquisition of Forty Seven Inc. only provides further evidence that Respondent knew about and opportunistically targeted Complainant’s GILEAD and FORTY SEVEN marks in connection with this announcement. Complainant also provided clear evidence that Respondent was attempting to sell the disputed domain name for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, which is evidence of bad faith under Policy, paragraph 4(b)(i). The disputed domain name fully incorporates Complainant’s highly distinctive and well-known GILEAD mark and Complainant’s FORTY SEVEN mark in the disputed domain name, and directed to a website soliciting offers to sell the disputed domain name. This indicates that Respondent sought to profit from or exploit Complainant’s trademarks by attempting to sell the disputed domain name to the highest bidder, which is evidence of bad faith registration and use under Policy paragraph 4(b)(i). Moreover, the Panel independently confirmed that Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks. Respondent’s pattern of abusive domain name registrations constitutes additional evidence of bad faith use and registration of the disputed domain name under paragraph 4(b)(ii) of the Policy. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. The Panel was able to identify at least four other UDRP proceedings in which Respondent was the losing respondent and ordered to transfer or cancel the disputed domain names. Therefore, the Panel finds that Respondent most likely registered the disputed domain name primarily for the purpose of profiting in some fashion from or otherwise exploit Complainant’s GILEAD or FORTY SEVEN marks, in a similar manner as been found by previous panels in previous proceedings against Respondent under the Policy. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraphs 4(b)(i) and (ii) 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 disputed domain name Brian J. Winterfeldt
Sole Panelist
Date: September 21, 2020
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