The Complainant is Gilead Sciences Ireland UC, Ireland, represented by Gilead Sciences, Inc., United States of America (“United States”).
The Respondent is Super Privacy Service LTD c/o Dynadot, United States, / Anil Sabanci, Turkey, / Adnan Ercan, Turkey. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 15, 2021. The Center verified that the Complaint together with the amendment to 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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021. The Center appointed Marilena Comanescu as the sole panelist in this matter on April 22, 2021. 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 Complainat is the subsidiary of Gilead Sciences, Inc., a research-based biopharmaceutical company founded in 1987 in California, United States. The Complainant discovers, develops and delivers innovative therapeutics to people with life-threatening diseases. The Complainant’s medication Veklury (remdesivir) is the first antiviral treatment approved by the United States Food and Drug Administration for COVID-19, which has brought a great attention to the VEKLURY brand worldwide. The Complainant holds numerous trademark registrations for VEKLURY in approximately 115 jurisdictions around the world, such as the European Union Trade Mark registration number 013622824 for the mark VEKLURY (word), filed on January 6, 2015 and registered on May 5, 2015, and covering goods and services in Nice classes 5, 16, 44. On February 17, 2021, the Complainant filed to register the European Trademarks for the words VEKLURY AERENTI (trademark number 018401396), VEKLURY AEREZ (trademark number 018401394), VEKLURY AERZI (trademark number 018401391) and VEKLURY AIRKEY (trademark number 018401401). The Complainant holds the domain name The disputed domain names were registered all on February 17, 2021. According to the information provided by the Registrar, the disputed domain names At the time of filing the Complaint, according to evidence provided in Annex F to the Complaint, all the disputed domain names were listed for sale for USD 988 each. None was used in relation to a website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical and confusingly similar to its well-known VEKLURY trademark, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Preliminary Procedural Issue. Consolidation of Multiple Disputed Domain Names and Respondents According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case, there are four disputed domain names, and apparently two Respondents. According to the information provided by the Registrar, the disputed domain names The present disputed domain names: (i) were registered in the name of the same privacy shield, with the same Registrar and on the same day; (ii) were created in a similar manner, reproducing the Complainant’s new trademark applications; and (iii) were used in a similar manner, being all listed for sale for the same amount. The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent. For the above, the Panel finds that the disputed domain names are subject to common control and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Respondents in the present procedure. See also section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). B. Identical or Confusingly Similar The Panel finds that the Complainant holds rights in the VEKLURY trademark. The disputed domain names Further, the disputed domain names reproduce exactly the Complainant’s trademark applications for VEKLURY AERENTI, VEKLURY AEREZ, VEKLURY AERZI and VEKLURY AIRKEY. It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain names are confusingly similar to the trademark VEKLURY, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark VEKLURY, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain names. In fact, at the time of filing the Complaint, the disputed domain names, reproducing the Complainant’s distinctive trademark, were listed for public sale. Registering a domain name knowing that third parties have established rights in the same and offering it for sale are not activities falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain names, nor an activity from which rights or legitimate interests could arise. For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith The Complainant has held trademark rights in VEKLURY since 2014. This Panel accepts the Complainant’s evidence that the VEKLURY trademark is well-known in its field. The disputed domain names were created in 2021 and incorporate the Complainant’s mark in its entirety. Given the fact that the mark is well-known and distinctive, the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain names randomly with no knowledge of the mark. In addition, the fact that the disputed domain names were registered in the same day as the Complainant’s applications for the European Union trademarks VEKLURY AERENTI, VEKLURY AEREZ, VEKLURY AERZI, VEKLURY AIRKEY and reproduce such trademark applications exactly, is further evidence of targeting and bad faith. For the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademark. Paragraph 4(b)(i) of the Policy provides a circumstance of bad faith registration and use when the respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In the present matter, according to the evidence provided in the Complaint, the disputed domain names were offered for sale for USD 988. The Panel finds that this amount exceeds the out-of-pocket costs directly related to the disputed domain names. Paragraph 4(b)(ii) of the Policy provides another circumstance of bad faith registration and use when the respondent registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Filing for four domain names reflecting Complainant’s trademarks can be considered a pattern of abusive conduct and registration of the disputed domain names in bad faith. Moreover, the Respondent registered the disputed domain names under a privacy service and did not participate in the present proceedings in order to put forward any arguments in its favor. Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names Marilena Comanescu
Sole Panelist
Date: April 26, 2021
Full & Egal Universal Law Academy