The Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.
The Respondent is Xing Wang, Hong Kong, 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 21, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 24, 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 September 24, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on November 15, 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 biopharmaceutical company which has been in operation since 1987.
The Complainant has registered the trademark GILEAD in many jurisdictions. For example, the Complainant owns the following registrations:
- United States trademark registration no. 3251595 registered on June 12, 2007;
- International trademark registration no. 1132718 registered on June 26, 2012;
- Australian trademark registration no. 1522129 registered on March 8, 2013;
- European Union trademark registration no. 3913167 registered on November 7, 2005;
- Chinese trademark registration no. 10357628 registered on January 21, 2017.
The disputed domain name was registered on August 14, 2021 and does not resolve to an active website but there appears to be an app named “GILEADS” which is being promoted as “developing and selling innovative drugs to solve unmet medical needs”. There is also a YouTube video about the app.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant’s trademark is well-known as established by prior UDRP decisions and has been in use for over 30 years. The disputed domain name contains the Complainant’s trademark GILEAD, which alone is sufficient to establish confusing similarity. The Complainant’s trademark GILEAD is well-known. The geographical abbreviation of the country code Top-Level Domain (“ccTLD”) “cc” stands for Cocos (Keeling) Islands, a territory of Australia. It does not help eliminate confusing similarity. But only increases likelihood of confusion as the Complainant is actively present in Australia.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Respondent aims at attracting Internet users looking for the Complainant’s products or information. The Respondent has created an app which refers to the disputed domain name and purports to sell pharmaceuticals. The Complainant’s trademark is so well-known that there cannot be a legitimate use by the Respondent. This is a case of cybersquatting.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. As per prior UDRP decisions, the mere registration of a domain name that is identical or confusingly similar to a well-known trademark creates a presumption of bad faith. The Respondent must have been aware of the Complainant’s trademark and goodwill and registered the disputed domain name in bad faith based on its description of its app. There has been an actual case of confusion. The use of a privacy service may be a further sign of bad faith conduct in the circumstances.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark GILEAD. The Panel is satisfied that the Complainant has established its ownership of the trademark GILEAD.
The disputed domain name incorporates the Complainant’s trademarks GILEAD in its entirety. It simply adds the letter “s”, which does not prevent a finding of confusing similarity. The ccTLD “.cc” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of proof shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Therefore, it is for the Respondent to prove that it has rights or legitimate interests. The Respondent has not been able to prove any rights or legitimate interests in the disputed domain name by failing to submit any response. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark as it is a well-known trademark. The disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in its entirety with an additional letter “s”. The use of the ccTLD “cc” which stands for Cocos (Keeling) Islands, Australia, where the Complainant has operations, reinforces the false impression that the disputed domain name is the Complainant’s website for the Australian market. Furthermore, the disputed domain name resolves to a website that cannot be found. Passive holding does not prevent a finding of bad faith. It is to be noted that the Panel was not able to retrieve the app in order to assess its relevance and impact on the findings but the above is sufficient to conclude that the Respondent has registered and is using the disputed domain name in order to trade off the reputation of the Complainant’s trademark.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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
Nayiri Boghossian
Sole Panelist
Date: November 22, 2021