The Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.
The Respondent is Adewale Tokosi, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 1, 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 April 20, 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021. The Center appointed Dawn Osborne as the sole panelist in this matter on May 20, 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 Complainant is the owner of the mark GILEAD, registered, inter alia, in China on February 21, 1996, Reg. No. 816124, covering “pharmaceuticals for the treatment and/or prevention of infectious diseases, cardiovascular and inflammatory conditions, degenerative disorders, and cancer” in Class 5, and in the United States on June 12, 2007, Reg. No. 3,251,595 in Class 5. The Domain Name registered in 2021 has been pointed to a site offering competing pharmaceuticals. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainant is the owner of the mark GILEAD, registered, inter alia, in China on February 21, 1996, Reg. No. 816124, covering “pharmaceuticals for the treatment and/or prevention of infectious diseases, cardiovascular and inflammatory conditions, degenerative disorders, and cancer” in Class 5, and other trademark registrations. The Domain Name registered in 2021 is confusingly similar to the Complainant’s mark adding only the dictionary word “from” and the generic Top-Level Domain (“gTLD”) “.xyz”. The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant. The Domain Name has been used for a site purporting to be an official site of the Complainant using the Complainant’s mark and the word “from” in the Domain Name to suggest that the web site attached to the Domain Name, which is used to offer competing pharmaceuticals, is a genuine site of the Complainant which cannot be a bona fide offering of goods or services or legitimate noncommercial or fair use. Diverting Internet users for commercial gain is registration and use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name consists of the Complainant’s GILEAD mark, the dictionary word “from” and the gTLD “.xyz”. The addition of the dictionary word “from” does not prevent confusing similarity between the Domain Name and the Complainant’s mark which is still recognisable in the Domain Name. The gTLD “.xyz” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. A gTLD is a necessary part of a domain name and “.xyz” does not form part of any trade mark involved in these proceedings. Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights. As such, the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has not authorised the use of its mark by the Respondent. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. Using the Domain Name containing the Complainant’s GILEAD mark with a reputation for pharmaceuticals for a site falsely purporting to be an official site of the Complainant using the Complainant’s mark, the word “from” in the Domain Name to suggest origin from the Complainant to offer competing products is confusing and is, therefore, not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. As such the Panel finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registered and Used in Bad Faith The evidence outlined above demonstrates that the Respondent is falsely suggesting he is connected and/or authorised by the Complainant in order to offer competing products and is evidence that the Responded has acted in opposition to the Complainant’s commercial interests and has unduly disrupted the business of the Complainant. In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing in that visitors to the Respondent’s site might reasonably believe it is connected to or approved by the Complainant when there is no connection due to deceptive use of the Complainant’s mark and the term “from” to suggest origin from the Complainant to offer competing products. Accordingly, the Panel holds additionally that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that web site or products offered on it. As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv). 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 Dawn Osborne
Sole Panelist
Date: May 21, 2021
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