The Complainant is Gilead Sciences, Inc., United States of America (“United States”), internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <gileadsiences.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2021. On March 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 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 March 23, 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 amended Complaint on March 23, 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 March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 27, 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.
The Complainant was founded in 1987 and it develops innovative medicines in areas of unmet medical needs, such as an antiviral drug used for the treatment of the Covid-19 disease in the United States. The Complainant employs approximately 14,500 individuals worldwide and in 2020, its worldwide revenue was USD 24.6 billion. The Complainant’s trademark GILEAD has been registered for example in the European Union under No. 3913167 as of November 7, 2005 and the trademark GILEAD SCIENCES as a US trademark under No. 1611838 as of September 4, 1990. The Complainant also operates its website at “www.gilead.com”.
The disputed domain name was registered on March 1, 2021.
The disputed domain name contains the Complainant’s famous trademarks GILEAD and GILEAD SCIENCES and the Complainant’s trademarks and the disputed domain name are therefore confusingly similar.
The Respondent is not affiliated or associated with the Complainant. The Complainant has not granted any rights to the Respondent to use the Complainant’s trademarks or register the disputed domain name and the Respondent is not commonly known by the Gilead name. The disputed domain name is not used for legitimate non-commercial use as the website to which it resolves contains sponsored links.
The Respondent has been fully aware of the Complainant and its trademark when registering the disputed domain name, which is used to showcase sponsored listings.
The Respondent did not reply to the Complainant’s contentions.
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark GILEAD in its entirety combined with a misspelling of the term “sciences”. The disputed domain name differs by one letter of the Complainant’s trademark GILEAD SCIENCES. The Panel considers that the disputed domain name is merely a typo of the Complainant’s trademarks and that the dominant feature of the Complainant’s trademarks is fully recognizable in the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
This means that the disputed domain name is confusingly similar with the Complainant’s trademarks and hence the first element of the Policy has been fulfilled.
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use the GILEAD or GILEAD SCIENCES marks or register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Moreover, the Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Considering that the Complainant has been using its trademark since 1987 and that the trademark has been held by previous UDRP panels to be well known, it is evident that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name resolves to a “pay-per-click” website containing links to third parties’ websites thus generating revenue for the Respondent when Internet users click the links.
It is therefore evident that the Respondent has registered the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website. The Panel considers that the Respondent is just the sort of cyber-squatter that the Policy was designed to foil.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
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, <gileadsiences.com> be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: May 10, 2021