Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.
Respondent is Xing Wang, China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 12, 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 17, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on December 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 BackgroundComplainant was founded in 1987 in Foster City, California. Being one of the largest biopharmaceutical companies in the world, it discovers, develops, and commercializes innovative medicines in areas of unmet medical need. Among the 25 pharmaceutical products it manufactures and offers for sale includes BIKTARVY, EPCLUSA, HARVONI, and TRUVADA. It also sells products which cure hepatitis C and preventing and treating HIV infection. Some of Complainant’s medications have been placed on the World Health Organizations’ List of Essential Medicines.
Complainant employs over 14,000 individuals worldwide. It was listed as #140 in the Fortune 500 Companies rankings and is regularly listed in the Fortune 500 Companies and Forbes’ World’s Best Employers rankings.
Complainant is the registered owner of the GILEAD trade mark (“Complainant’s Mark”), secured by over 120 trade mark registrations around the word, including:
Mark
Jurisdiction
Registration No.
Registration Date
GILEAD
United States
3,251,595
June 12, 2007
GILEAD
India
2363685
September 10, 2015
GILEAD
European Union
3913167
November 7, 2005
GILEAD
China
816124
February 21, 1996
GILEAD
Brazil
904960269
July 7, 2015
GILEAD
South Africa
2012/17167
June 27, 2012
Complainant is also the owner of the domain name
According to the publicly available WhoIs the Domain Names were registered as follows:
At the time of filing the Complaint, the Domain Names
Complainant asserts that the websites hosted on the Domain Names either state that the sites were not found when Complainant tried to access them (
Complainant states that Respondent has no connection to Complainant and has no authority or been granted any rights to register domain names containing Complainant’s Mark. Complainant asserts that Respondent has cybersquatted on the Domain Names and impersonated Complainant to divert traffic from Complainant’s genuine website for Respondent’s own fraudulent commercial gain.
Complainant contends that the Domain Names are confusingly similar to Complainant’s Mark as they all contain the Mark in its entirety with the addition of the letter “s” which Complainant contends presents a case of typosquatting. The Domain Names also contain various generic Top-Level Domains, i.e. “.live”, “.xyz”, “.club”, and “.shop”, which Complainant asserts is evidence of bad faith registration by Respondent and not a legitimate use of the Domain Names.
Complainant further contends that Respondent had constructive knowledge of Complainant’s Mark and its rights due to Complainant’s longstanding worldwide trade mark registrations, which is evidence to bad faith registration.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant is a large, well-known pharmaceutical company. It has since 1987 developed and sold biopharmaceutical products. Complainant has been listed as #140 in the Fortune 500 Companies rankings and Complainant’s Mark has been registered around the world.
The Domain Names each contain the word “gilead” along with the letter “s”. Complainant contends that the Domain Names are confusingly similar to Complainant’s Mark as they all contain Complainant’s Mark in its entirety with the addition of the letter “s”.
Given Complainant’s use of Complainant’s Mark and its registration of that mark in numerous jurisdictions there is no doubt that Complainant has rights in Complainant’s Mark. Equally, the addition of the letter “s” to the Complainant’s Mark does not prevent the confusing similarity nature of the Domain Names. The various gTLDs may be disregarded for purposes of the first element, since they are standard technical requirements necessary for registration. The Domain Names are therefore found to be confusingly similar to Complainant’s Mark.
The first ground under the Policy is made out.
B. Rights or Legitimate InterestsComplainant asserts that the websites hosted on the Domain Names either cannot be located or if located contains websites soliciting investments and utilising Complainant’s logo, but without authority or permission. Complainant asserts that Respondent has no authority to use Complainant’s Mark as part of a domain name. Further, Complainant asserts that Respondent has engaged in cyber-squatting and is impersonating Complainant for its own commercial gain.
In the absence of evidence of any permission or authority and in the absence of any attempt to refute Complainant’s allegations, the Panel finds that the registration and use of the Domain Names by Respondent is likely to result in consumers being confused into believing that the Domain Names, individually and together, are connected to Complainant. Even though Respondent is at present passively holding two of the four Domain Names
In addition, regardless of use, the construction of the Domain Names is generally such to carry a risk of implied affiliation that would mislead or deceive consumers into believing they were accessing Complainant’s website, contrary to the fact.
Under the circumstances, the Panel concludes that the Domain Names were not registered and have not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithComplainant submits that Respondent had constructive knowledge of Complainant’s Mark and its rights due to Complainant’s longstanding worldwide trade mark registrations. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Even though two of the four Domain Names do not resolve to any active website at present, past UDRP panels have noted that the concept of bad faith in the context of Policy paragraph 4(a)(iii) does not require a positive act on the part of a respondent and that passively holding a domain name may not prevent a finding of bad faith: See Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present case, given Complainant’s notoriety, Respondent’s default, and the implausibility of any good faith use, especially when noting that Respondent uses the other two Domain Names in an active and misleading manner, the Panel infers that Respondent had knowledge of Complainant when it registered the Domain Names and has engaged in bad faith.
In the present case, Complainant’s Mark is closely linked and associated with Complainant. Given the fact that Respondent has registered four domain names that are very similar to Complainant’s Mark, this implies bad faith.
Complainant has therefore established the third ground under 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 Domain Names
Clive L. Elliott Q.C.
Sole Panelist
Date: December 16, 2021