The Complainant is Gilead Sciences, Inc., United States of America (“U.S.”), represented by Gilead Sciences, Inc., U.S..
The Respondent is Fahima Tagzirt, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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 August 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 August 31, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on October 18, 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 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 U.S., Singapore, India, the European Union (“EU”), China, and Brazil:
- GILEAD – U.S. Reg. No. 3,251,595, applied for August 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 September 10, 2015 in Cl. 5;
- GILEAD – European Union Trademark Reg. No. 3913167, applied for July 7, 2004, and registered November 7, 2005, in Cl. 5;
- GILEAD – China Reg. No. 816124, registered February 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 25 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. The Complainant submits that GILEAD is a well-known and famous brand, adding that it 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 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 letter “s” between the letters “a” and “d” 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 registered the disputed domain name in order to divert Internet users seeking the Complainant’s GILEAD pharmaceutical products or medical information. The Complainant maintains that Respondent must have been aware of the Complainant and its rights in the GILEAD mark, noting the well-known nature of the mark and the recent rise in news coverage of the Complainant in connection with the ongoing Covid-19 pandemic.
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.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Panel holds that the disputed domain name
The Panel is satisfied that the disputed domain name
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant rights or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not referred to or commonly known by the disputed domain name. The Respondent is not an authorised licensee or distributor of the Complainant’s products. The Complainant has not authorised the Respondent to use the trademark GILEAD in any way including as a domain name. The disputed domain name resolves to a website including pay-per-click links in reference to diabetes and treatments, fields of services related to those of the Complainant. Coupled together with the construction of the disputed domain name itself, which carries a risk of implied affiliation, the disputed domain name seeks to capitalize on the reputation and goodwill associated with the Complainant and the GILEAD trademark, which cannot constitute a bona fide, noncommercial offering or fair use. See sections 2.5.1 and 2.9 of WIPO Overview 3.0.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. 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 disputed 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 documented out-of-pocket costs directly related to the domain name;
(ii) the respondent 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 respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the Complainant’s trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the Complainant’s GILEAD mark is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name.
The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant, and presumably receives click-through revenue from the pay-per-click links displayed at its website. As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website.
The Panel also finds that the Respondent’s registration of the disputed domain name is considered an act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights, which has often been recognized as evidence of bad faith registration per se. See Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011); ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, by itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach.
Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.
The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy has been met.
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,
Daniel Peña
Sole Panelist
Date: November 1, 2021