The Complainant is Gilead Sciences, Inc., United States of America (“United States” or “U.S.”), internally represented.
The Respondent is Ambrose Quin, 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 27, 2021. On July 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 30, 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 30, 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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 2, 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 Complainant states that it was founded in 1987 and “is one of the largest and most successful biopharmaceutical companies in the world,” with 2020 worldwide revenue of approximately USD 24.3 billion. Complainant states, and provides evidence to support, that it is the owner of more than 125 trademark registrations worldwide that include GILEAD, including U.S. Reg. No. 3,251,595 (registered on June 12, 2007) (the “GILEAD Trademark”). The Disputed Domain Name was created on July 12, 2021, and is associated with an “index” (inactive) web page. 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the GILEAD Trademark because it contains the GILEAD Trademark plus the term “pharm,” which is short for “pharmaceutical” and “does not help distinguish the Domain from Complainant’s trademark.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not associated or affiliated with Complainant”; “Complainant has not granted any rights to Respondent to use the GILEAD mark, whether a license to sell any products or offer any services, or any rights to register the Domain”; “[t]here is no indication that Respondent is commonly known by the GILEAD name”; “Respondent has no legitimate purpose for using the GILEAD mark together with the term ‘pharm’”; and “Complainant’s mark is so well known and recognized, there can be no legitimate use by Respondent.” - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[w]hen viewing the totality of the circumstances, Respondent’s acts overwhelmingly demonstrate bad faith use and registration: 1) the intentional registration of a domain name consisting solely only of the GILEAD trademark and generic term ‘pharm’; 2) purposefully registering a domain with search terms to divert Internet users; 3) the use of a privacy shield; 4) all in the context of Gilead’s recent fame due to its treatment for Covid-19.” B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the GILEAD Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the GILEAD Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “gileadpharm”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Disputed Domain Name contains the GILEAD Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Accordingly, the Panel finds that Complainant has proven the first element of the Policy B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[Respondent is not associated or affiliated with Complainant”; “Complainant has not granted any rights to Respondent to use the GILEAD mark, whether a license to sell any products or offer any services, or any rights to register the Domain”; “[t]here is no indication that Respondent is commonly known by the GILEAD name”; “Respondent has no legitimate purpose for using the GILEAD mark together with the term ‘pharm’”; and “Complainant’s mark is so well known and recognized, there can be no legitimate use by Respondent.” WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.” Additionally, noting that the Disputed Domain Name consists of Complainant’s GILEAD Trademark in its entirety together with the term “pharma”, which is descriptive of Complainant’s services in the pharmaceutical industry, the nature of the Disputed Domain Name is such to carry a risk of implied affiliation that cannot confer rights or legitimate interests upon Respondent. The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). As set forth above, the Disputed Domain Name is associated with an “index” (inactive) web page. As set forth in section 3.3 of WIPO Overview 3.0: From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Here, it is apparent that the GILEAD Trademark is highly distinctive, Respondent has not submitted a response, and it is implausible that the Disputed Domain Name could be put to any good faith use. A previous panel reached a similar conclusion in Gilead Sciences, Inc. v. Super Privacy Service LTD c/o Dynadot / Kolawole Feyisitan,WIPO Case No. D2020-3517 (transfer of Accordingly, the Panel finds that the Complainant has proven the third element 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 Douglas M. Isenberg
Sole Panelist
Date: September 6, 2021
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