The Complainant is Gilead Sciences, Inc., United States of America, represented internally.
The Respondent is Michael Reeves, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2021, 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 the Complainant on July 29, 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 July 29, 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 August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on September 14, 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 BackgroundThe Complainant is Gilead Sciences, Inc., a research-based biopharmaceutical company founded in 1987 with headquarters in Forster City, California. The Complainant concentrates on the discovery, development, and commercialization of pharmaceuticals providing life-threatening illnesses, with operations in more than 35 countries worldwide. The Complainant trades under the “Gilead” name, and has registered its GILEAD trademark in numerous jurisdictions, including the United States of America (U.S.), Singapore, India, the European Union (“EU”), China, and Brazil:
- GILEAD – U.S. Reg. No. 3,251,595, applied for Aug. 1, 2006, and registered June 12, 2007, in Cl. 5 (first use and use in commerce April 7, 1989);
- GILEAD – Singapore Reg. No. T08/03446D, registered on July 24, 2008, in Cl. 5;
- GILEAD – India Reg. No. 2363685, applied for July 13, 2012, and registered Sept. 10, 2015 in Cl. 5;
- GILEAD – European Union Trade Mark Reg. No. 3913167, applied for July 7, 2004, and registered Nov. 7, 2005, in Cl. 5;
- GILEAD – China Reg. No. 816124, registered Feb. 21, 1996, in Cl. 5;
- GILEAD – Brazil Reg. No. 904960269, registered July 7, 2015, in Cl. 5; and
- GILEAD SCIENCES – U.S. Reg. No. 1611838, applied for September 1, 1989, and registered September 4, 1990, in Cl. 5; (first use and use in commerce April 22, 1988).1
The Complainant has used the GILEAD mark in commerce since as early as 1989, and has registered over 340 domain names reflecting its GILEAD mark, including the domain name
The disputed domain name
The Complainant maintains that Gilead is one of the most successful biopharmaceutical companies in the world, having developed and offered for sale over twenty-five highly successful pharmaceutical products such as BICKTARVY, EPCLUSA, HARVONI, and TRVUADA. The Complainant asserts that it owns exclusive rights to its GILEAD mark, which has been used for over 30 years, and holds more than 125 trademark registrations for its GILEAD and GILEAD SCIENCES marks, including registrations of the GILEAD marks in the U.S. The Complainant submits that GILEAD is a well-known and famous brand, adding that is a member of the S&P 500, employs 14,500 individuals worldwide, and has been the recipient of unsolicited news articles in publications such as the New York Times, Wall Street Journal, and Washington Post, as well as Internet sources and other articles. The Complainant cites as support the decision in Gilead Sciences, Inc. v. Super Privacy Service LTD c/o Dynadot / Kolawole Feyisitan,WIPO Case No. D2020-3517.
The Complainant asserts that the disputed domain name is identical or confusingly similar to the Complainant’s GILEAD mark. The Complainant represents that it owns exclusive rights in the well-known and famous GILEAD mark, which the Complainant submits is sufficient to support a finding that the disputed domain name is confusingly similar to the Complainant’s GILEAD mark. The Complainant emphasizes that the Respondent’s addition of the generic term “pharmaceutical” does not distinguish the disputed domain name from the Complainant’s mark. The Complainant further observes that the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant when assessing the confusing similarity of the disputed domain name to the Complainant’s mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is neither associated nor affiliated with the Complainant and has not been authorized, licensed or otherwise permitted to register or use the disputed domain name to offer products or services. The Complainant finds no indication that the Respondent has been commonly known by the disputed domain name, and maintains that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor made any legitimate noncommercial or other fair use of the disputed domain name.
The Complainant asserts that the Respondent instead has pointed the disputed domain name to the Complainant’s website in order to capture and divert Internet search engine queries made by individuals seeking the Complainant’s GILEAD pharmaceutical products or medical information. The Complainant maintains that users would unintentionally expose personal information to the Respondent, who could then exploit that personal information for the Respondent’s on financial gain. The Complainant adds that even if the Respondent was not engaging in a phishing scheme no legitimate purpose exists for the Respondent to use the GILEAD mark with the term “pharmaceutical”.
The Complainant concludes that the disputed domain name was registered and is being used in bad faith. According to the Complainant, when reviewing the totality of circumstances the Respondent’s actions overwhelmingly demonstrate bad faith use and registration. Those acts, as asserted by the Complainant, include the following: (1) intentional registration consisting of the Complainant’s GILEAD mark and the generic term “pharmaceutical”; (2) the Respondent’s purposeful registration of the disputed domain name with search terms to divert Internet users; (3) the Respondent’s pointing of the disputed domain name to the Complainant’s website; and (4) the context of GILEAD’s recent fame due to treatment for Covid-19.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Scope of the PolicyThe Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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, UDRP 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 view is that the burden of production shifts 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.
B. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the GILEAD mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s GILEAD mark is recognizable in the disputed domain name.3 The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.4 Applying this comparison, the Complainant’s mark clearly is recognizable. The Respondent’s inclusion in the disputed domain name of the descriptive word “pharmaceutical” does not in any way prevent a finding of the confusing similarity between the disputed domain name and the Complainant’s mark.5 When at least a dominant feature of a relevant trademark is recognizable in the disputed domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.6 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Furthermore, gTLDs, in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.7
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsAs noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s GILEAD mark. Regardless, the Respondent has registered a domain name confusingly similar to the Complainant’s distinctive and well-known GILEAD mark, which the Respondent has pointed to the Complainant’s website in what appears to be an attempt to capture and divert Internet search engine queries made by individuals seeking the Complainant’s GILEAD pharmaceutical products.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident to the Panel that the Respondent had the Complainant’s GILEAD mark in mind when registering the disputed domain name. The record in this case is convincing that the Respondent deliberately pointed the disputed domain name to the Complainant’s website, scheming to capture and divert Internet search engine queries made by individuals seeking GILEAD pharmaceutical products.
Having regard to the foregoing, the Panel concludes that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. Nor is there any indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, the Panel has found nothing that could remotely support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known trademark and a descriptive term related to the Complainant’s area of business, carries a risk of implied affiliation.8
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion >with thecomplainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel finds that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record is convincing that the Respondent had the Complainant’s GILEAD mark in mind when registering the disputed domain name. The Respondent acted opportunistically and in bad faith, seeking to exploit and profit from the Complainant’s trademark rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
William R. Towns
Sole Panelist
Date: September 29, 2021
1 The Complainant’s registered trademarks identified hereinafter are referred to for convenience as the “GILEAD mark”.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 Id.