The Complainant is Gilead Sciences, Inc., United States of America (“U.S.”), represented by Gilead Sciences, Inc., U.S.
The Respondent is 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 October 1, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 6, 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 also on October 6, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 5, 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 company founded in 1987 in Foster City, California, and is a large biopharmaceutical enterprise. In 2020, the Complainant’s total worldwide revenue was approximately USD 24.6 billion.
The Complainant has over 120 trademark registrations around the world and through ongoing use, including the following:
- GILEAD – U.S. Reg. No. 3,251,595, registered on June 12, 2007 covering: “pharmaceutical preparations, namely, antivirals, antifungals and preparations for the treatment of infectious conditions” in Class 5;
- GILEAD – India Reg. No. 2363685, registered on September 10, 2015 covering: “pharmaceutical preparations” in Class 5;
- GILEAD – European Union Reg. No. 3913167, registered on November 7, 2005 covering inter alia: “pharmaceutical and veterinary preparations; chemical, analytical and diagnostic reagents for in vivo use; chemicals for use in medical research, and medical or veterinary diagnosis,” in Class 5 and “scientific, medical and industrial research and development services; clinical research; laboratory research; research and development of new drugs and clinical products; analysis of materials; chemical analysis; laboratory services; laboratory testing services; medical laboratory services; information and advisory services relating to the foregoing, including such services provided on-line from a computer network or the internet” in Class 42;
- GILEAD – China Reg. No. 816124, registered on February 21, 1996 covering inter alia: “pharmaceuticals for the treatment and/or prevention of infectious diseases, cardiovascular and inflammatory conditions, degenerative disorders, and cancer” in Class 5; GILEAD – Brazil Reg. No. 904960269, registered on July 7, 2015 covering “pharmaceutical preparations” in Class 5; and
- GILEAD – South Africa Reg. No. 2012/17167, registered on June 27, 2012 covering: “pharmaceutical preparations” in Class 5.
The Complainant is also the owner of the domain name
The disputed domain name was registered on September 20, 2021 and is currently inactive. Before the filing of the Complaint, the address
The Complainant says that the disputed domain name contains what it refers to as its well-known and famous GILEAD trademark. It points out that this is sufficient to support a finding that the disputed domain name is confusingly similar to the Complainant’s mark. The Respondent registered the disputed domain name containing the GILEAD mark over thirty years after the Complainant entered the biopharmaceutical industry. The Complainant also points out that the addition of the generic top-level domain “.info” does not help distinguish the disputed domain name from the Complainant’s trademark.
The Complainant asserts that the Respondent is not associated or affiliated with it, and that it has not granted any rights to the Respondent to use the GILEAD or “Leaf and Shield” marks, any license to sell any products or offer any services, or any rights to register the disputed domain name.
According to the Complainant, the Respondent’s strategy for registering the disputed domain name was to capture and divert Internet search engine queries made by individuals seeking Gilead’s genuine pharmaceutical products or medical information. The Complainant says that this is clear on its face, based on the registration of a domain name containing the entirety of the GILEAD trademark, adding only the letter “s,” together with the g-TLD .info. The Complainant says that the addition of only an “s” to the Complainant’s famous GILEAD mark is a straightforward case of typosquatting.
Further, the website hosted by way of the disputed domain name used the Complainant’s own logo and invited individuals to register for some unknown service, signaling a fraud scheme by which the Respondent intended to use the Complainant’s goodwill for its own financial gain. In any case, or so the Complainant maintains, the Complainant’s mark is so well known and recognized, that there can be no legitimate use of it by the Respondent. All the Respondent’s actions amount to bad faith, and not a legitimate use of the disputed domain name.
According to the Complainant, when viewing the totality of the circumstances, the Respondent’s acts overwhelmingly and clearly demonstrate bad faith use and registration, in particular, the intentional registration of a domain name consisting solely of the GILEAD trademark and the letter “s” along with a generic top-level domain; the unauthorized use of the Complainant’s logo; the registration of other similar domains; the use of a privacy shield; and all this in the context of Gilead’s presence and fame worldwide.
Finally, the Complainant says that the Respondent has made it perfectly clear that it is aware of and using Complainant’s logo and goodwill for its own financial gain and likely a scam.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not exactly identical to the Complainant’s trademark GILEAD but differs only in the addition of the final “s”. The Complainant’s trademark is clearly and immediately recognizable in the disputed domain name. The difference is minimal and irrelevant and in the nature of a cybersquatting type of variation on a registered trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s GILEAD trademark.
B. Rights or Legitimate InterestsThere is nothing before the Panel to suggest that the Respondent has any legitimate interests or rights in the disputed domain name. The Respondent has not replied to the Complainant’s contentions. The Complainant has not authorized the Respondent to use its GILEAD trademark in any way, and the Respondent is not known by that term or the disputed domain name. It is very difficult to imagine any legitimate use the Respondent could make of the disputed domain name without the consent of the Complainant, given the reputation that attaches to the Complainant’s trademark. The use that has been made of the disputed domain name is not of a nature to vest any rights or to support the recognition of a legitimate interest. There is no evidence of any legitimate non-commercial type use.
C. Registered and Used in Bad FaithGiven the reputation that attaches to the GILEAD trademark and the size and reach of the Complainant which owns it, it is inconceivable that the Respondent was not aware of the Complainant’s rights in its distinctive mark when the disputed domain name was registered. The composition of the disputed domain name further reinforces that conclusion. The Complainant points out that its logo was also used on a website associated with the disputed domain, but even without any use everything indicates bad faith, including the addition of the “-s” to achieve registration. This is arguably an example of cybersquatting where the Respondent intends to gain financially from common mistakes made by Internet users searching for a trademark and associated products or services. It is in any case difficult to imagine any use of the disputed domain name that would not amount to bad faith use, given its widespread reputation.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 A. Van Caenegem
Sole Panelist
Date: November 18, 2021