Complainant is Gilead Sciences, Inc., United States of America (“United States”), internally represented.
Respondent is JH Kang, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 2, 2021. The Center verified that the Complaint together with the amended 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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2021. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 9, 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 Background Complainant alleges to be the owner of many trademarks through the world and provides evidence of at least 16 trademark registrations for the signs GILEADS in various offices throughout the world, including: - Brazilian trademark registration no. 904960269 GILEAD, registered July 7, 2015, in class 5. - Chinese trademark registration no. 10357628 GILEAD, registered January 21, 2017, in class 5; - Chinese trademark registration no. 12146670, registered July 28, 2014 in class 35; - European Union trademark registration no. 10125607GILEAD, registered December 16, 2011 7, 2005, in classes 9, 10, and 41; and - United States trademark registration no. 4279898 GILEAD registered January 22, 2013, in class 5. Complainant also provides evidence of the United States trademark no. 3,265,504 for the sign ADVANCING ACCESS, registered July 17, 2007, in class 44. Moreover, the Complainant is also the owner the domain name The disputed domain name Complainant is Gilead Sciences, Inc., United States, one of the largest companies in the pharmaceutical industry. It develops, manufactures and offers for sale various pharmaceuticals and is regularly listed in the Fortune 500 companies. It employs over 12,000 individuals worldwide. The disputed domain name is identical to the trademarks in which Complainant has rights Complainant demonstrates that its company is one of the leading and most successful companies in the biopharmaceutical sector. First, Complainant establishes the well-known and famous character of its GILEAD mark for pharmaceutical products and its medical information services. The mark has gained visibility and distinctiveness in the context of the COVID-19 epidemic. Complainant also owns an ADVANCING ACCESS service mark in connection with a program for helping patients obtain assistance with medication costs and understand insurance coverage. Complainant asserts that the fact that the disputed domain name reproduces its well-known and famous GILEAD trademark is sufficient to show that the disputed domain name is confusingly similar to Complainant’s mark. According to Complainant, Respondent was trying to capitalize on its marks, in order to divert search and web traffic for its own commercial gain. Complainant also notes that the disputed domain name was registered thirty years after Complainant entered the pharmaceutical industry and fifteen years after it started using the ADVANCING ACCESS trademark. Complainant adds that the addition of the country code Top-Level Domain (“ccTLD”) “.co” is irrelevant to determine whether the disputed domain name is confusingly similar to its marks. Respondent has no rights or legitimate interests in respect of the disputed domain name First, Complainant specifies that Respondent is neither associated or affiliated with its company in any way, nor has been granted any rights to use its marks or register the disputed domain name. Complainant furthers argues that Respondent is not commonly known by the GILEAD or ADVANCING ACCESS names. As a result, Complainant considers that Respondent does not have any rights or legitimate interest in the disputed domain name. In addition, Complainant asserts that Respondent did not register the disputed domain name with any bona fide intention to offer goods and services. According to Complainant, Respondent’s sole intention in registering the domain name was to divert web traffic for its own profit. Complainant also underlines the well-known and famous character of the GILEAD trademark as excluding any possibility of a legitimate use of the disputed domain name by Respondent. The disputed domain name was registered and is being used in bad faith Complainant claims that the disputed domain name has been registered and is being used in bad faith. Complainant underlines that the disputed domain names consists solely of the reproduction of its GILEAD and ADVANCING ACCESS trademarks. Given all the trademarks registrations for the GILEAD sign as well as its well-known and famous character, Complainant considers that Respondent has constructive knowledge of its rights and registered the domain name to divert web traffic for its own profit. Complainant also adds that Respondent has been subject to numerous other UDRP complaints, as a respondent and has been considered as having registered and been using the subject domain names in bad faith. Finally, Complainant adds that the use of a privacy shield and the hosting of sponsored listings on the Domain also supports its claim of bad faith registration by Respondent. B. Respondent Respondent did not reply to the Complainant’s contentions and is therefore in fault. 6. Discussion and Findings According to Policy 4(a) there are three conditions, the second and third of which are alternative, that the Complainant must satisfy in order to obtain a decision that the disputed domain name registered by the Respondent be deleted or transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has registered the GILEAD trademark in various jurisdictions around the world, and the ADVANCING ACCESS trademark in the United States. The Panel considers that the trademarks rights of Complainant in the signs GILEAD and ADVANCING ACCESS are prima facie established by these trademarks registrations. Complainant claims that since the disputed domain name reproduces its trademarks identically and in their entirety, it is therefore likely to cause a likelihood of confusion with them. A well-established consensus view among UDRP panels is that “a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; andsee DALKIA v. 胡东 (Hu Dong aka Dong Hu), WIPO Case No. D2020-1145). The Panel agrees and finds the disputed domain name to be identical or confusingly similar to Complainant’s trademarks. Complainant also specifies that the addition of the ccTLD “.co” does not neutralize this similarity. Previous UDRP decisions have continuously held that “a generic Top-Level Domain (‘gTLD’) or ccTLD indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the ‘.com’ indicator to be irrelevant in the circumstances of the present case, and so finds”(See Compagnie Générale des Etablissements Michelin v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0226). The Panel agrees and considers the “.co” ccTLD to be irrelevant in assessing the similarity of the disputed domain name to Complainant’s marks. In light of these previous decisions, Panel considers that the disputed domain name is identical or confusingly similar to the GILEAD and ADVANCING ACCESS trademarks. The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant argues that Respondent is not known by the GILEAD or ADVANCING ACCESS names, is not associated or affiliated with its company in any way, and has not been granted any rights to use its marks or register the disputed domain name, that is sufficient to establish that Respondent has no rights or legitimate interests nor any bona fide intention to offer goods and services in connection to the disputed domain name, as held in previous UDRP decisions. (See, e.g.,“The Respondent is not a licensee of, or otherwise affiliated with, the Complainant or Sidley Austin Holding LLP, and has not been authorized by the Complainant or Sidley Austin Holding LLP to use the SIDLEY trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.” Sidley Austin LLP v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-2991). The Panel agrees and holds that Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests, nor any bona fide intention to offer goods and services in connection to the disputed domain names, which has not been rebutted by Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith First, Complainant claims that given the well-known character of its house mark, Respondent had constructive knowledge of Complainant’s marks at the time it registered the disputed domain name. Registration was thus in bad faith. As established in past UDRP decisions, registration in bad faith may be found by looking at the well-known character of the trademark at issue. (See“Given the well-known character of the Crédit Industriel et Commercial trademarks and moreover that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain names. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names. The Panel finds that the domain name was registered in bad faith to disrupt the Complainant’s activities.” Crédit Industriel Et Commercial S.A. v. Latifa Yatim, WIPO Case No. D2019-0474). Complainant also argues that Respondent’s use of a privacy shield supports the claim of bad faith. Previous UDRP decisions have also established that “Respondent’s registration through a privacy shield and its deliberate attempt to conceal its true identity is evidence of its bad faith use and registration” (See, e.g., Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980). The Panel agrees with these contentions. With regard to the reputation of Complainant and its marks, Panel also finds that Respondent registered the disputed domain name in bad faith. Second, Complainant relies on the fact that Respondent is hosting sponsored links to supports its claim of bad faith. Past UDRP decisions, including the following, have indicated in a case where “it [was] clear that the disputed domain name wholly contains the Complainant’s reputed AUTODESK mark and resolve[d] to a parking site featuring sponsored links to products and services that compete with those provided by the Complainant” and where “it [was thus] likely that Internet users seeking the Complainant’s website could be confused into thinking that the disputed domain name had some association with the Complainant and when clicking onto it would be redirected to the parking site with sponsored competitors links”, that “it [was] more likely than not that the Respondent [benefitted] commercially from these sponsored links”, and thus that “the requirements of paragraph 4(b)(iv) are fulfilled in this case.” (See Autodesk, Inc. v. Contact Privacy Inc. Customer 0150101990 / Balticsea LLC, WIPO Case No. D2018-0172). Therefore, Panel finds Respondent is using the disputed domain name in bad faith. The Panel thus holds that the disputed domain name has been registered in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision For 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 Nathalie Dreyfus
Sole Panelist
Date: March 23, 2021
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