The Complainant is Gilead Sciences, Inc., United States of America (“U.S.”), represented by Gilead Sciences, Inc., U.S.
The Respondent is Super Privacy Service TLD c/o Dynadot, U.S. / Xing Wang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 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 October 1, 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2021.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 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 BackgroundThe Complainant is one of the largest biopharmaceutical companies in the world and was founded in 1987. In 2020, Complainant’s total worldwide revenue was approximately USD24.6 billion; it currently employs over 14,000 individuals worldwide.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on September 11, 2021. The language of the registration agreement at the time of registration was English.
The Complaint is based amongst others on the following verbal trademarks consisting of the term “gilead” and applied for before the date of registration of the disputed domain name:
- U.S. trademark No. 3,251,595, registered on June 12, 2007, for products in class 5;
- Chinese trademark No. 816124, registered on February 21, 1996, for products in class 5;
It results from the undisputed evidence provided by the Complainant that the disputed domain name resolved to a website using the Complainant’s trademark GILEAD (without “s”) and Logo, describing the company as a pharmaceutical company and inviting individuals to “invest” and “enjoy a 10% dividend”.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant points out that the disputed domain name is identical or, at least, confusingly similar to Complainant’s trademark GILEAD, since it contains the entirety of the GILEAD trademark, adding only the letter “s”, together with generic Top-Level Domain (“gTLD”) .net.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, following the Complainant, (1) the Respondent is neither affiliated nor associated with the Complainant in any way; (2) the Complainant has not granted the Respondent any rights to use the GILEAD mark or to register the disputed domain name; (3) hosting a website on the disputed domain name using the Complainant’s logo and inviting individuals to “invest”, signals a fraud scheme by which the Respondent intends to use the Complainant’s goodwill for its own financial gain; (4) the Complainant’s mark is so well known and recognized, there can be no legitimate use by the Respondent; and, (5) the Respondent’s cybersquatting on the disputed domain name can be seen for no other purpose than wrongfully diverting traffic for its own commercial gain.
Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith in particular for the following reasons: (1) the intentional registration of a domain name consisting solely of the GILEAD trademark and the letter “s” along with a gTLD; (2) the unauthorized use of the Complainant’s logo; (3) the actual confusion that has already occurred; (4) the use of a privacy shield; and, (5) all in the context of the Complainant’s presence and fame worldwide. Furthermore, the Complainant contends that the Respondent had constructive knowledge of the Complainant’s trademarks when registering the disputed domain name, since it is using the Complainant’s logo and goodwill for its own financial gain and scam.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the owner of several verbal trademark registrations consisting of the term GILEAD, supra. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102). This Panel shares the same view and notes that the Complainant’s registered trademark GILEAD is fully included in the disputed domain name.
Furthermore, it is the view of this Panel that adding the letter “s” to the trademark in the disputed domain name does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark, in particular regarding its wording and pronunciation. Moreover, this Panel considers this case to be a typical case of “typosquatting”, which occurs when one letter is added or replaced by another in a domain name. According to the consensus view of UDRP panels, a domain name which contains a common or obvious misspelling of a trademark normally is found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see e.g. Carrefour v. WhoisGuard Protected, WhoisGuard, Inc. / Sanny Biori,WIPO Case No. D2020-0106). In the Panel’s view, this is the case for the disputed domain name and the addition of an “s” at the end of the trademark, which might be understood as an obvious misspelling in the sense of a plural or genitive “s”.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s uncontested evidence that the disputed domain name resolved to a website using the Complainant’s trademark GILEAD (without the letter “s”) and Logo, describing the company as a pharmaceutical company and inviting individuals to “invest” and “enjoy a 10% dividend”. However, the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website in any way. In this Panel’s view, such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use rather capitalizes on the reputation and goodwill of the Complainant’s trademarks and is therefore likely to mislead Internet users. In addition, the Respondent did not submit any evidence of bona fide preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized or licensed the Respondent’s use of the GILEAD trademarks for registering the disputed domain name, which are confusingly similar.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademarks GILEAD are distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this trademarked term. In particular, the Panel notes that the GILEAD trademark is reproduced in its entirety with the addition of an “s”. In addition, the disputed domain name is used for a purely commercial website, so that a “noncommercial” use is excluded from the outset.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant and concrete evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It is the view of this Panel that these circumstances are met in the case at hand:
It results from the documented and undisputed evidence provided by the Complainant that the disputed domain name resolved to the website using the Complainant’s trademark GILEAD (without the letter “s”) and Logo, describing the company as a pharmaceutical company, and inviting individuals to “invest” and “enjoy a 10% dividend”. However, as exposed above, the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademarks and business. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks GILEAD when it registered the disputed domain name. Registration of a domain name which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see e.g. Accor v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Andrew Johnson,WIPO Case No. D2021-1755).
The finding of bad faith registration and use is supported by the following further circumstances resulting from the case at hand:
(i) the identical inclusion of the trademark GILEAD in the disputed domain name;
(ii) the lack of rights and legitimate interests from the Respondent;
(iii) the Respondent’s failure to submit a response to the complaint,
(iv) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use;
(v) the implausibility of any good faith use to which the disputed domain name may be put; and
(vi) the Respondent concealing its identity behind a privacy shield.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, 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,
Tobias Malte Müller
Sole Panelist
Date: November 16, 2021