WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kite Pharma, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Ken Taylor, Thyssenkrupp Airport Systems

Case No. D2021-1096

1. The Parties

Complainant is Kite Pharma, Inc., United States of America, represented by Gilead Sciences, Inc., United States of America (“United States” or “U.S”).

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Ken Taylor, Thyssenkrupp Airport Systems, United States.

2. The Domain Name and Registrar

The disputed domain name <kite-pharma.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 12, 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 Complainant on April 16, 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 April 16, 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2021.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on June 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 Background

Complainant’s corporate name is Kite Pharma, Inc. Complainant was founded in 2009 and is a biopharmaceutical company which develops cancer immunotherapy products. Complainant was acquired by Gilead in 2017 for USD 11.9 billion and is now a wholly-owned subsidiary of Gilead.

Complainant owns exclusive rights to the KITE and KITE PHARMA trademarks, including rights secured by over 157 trademark applications and 120 registrations for the KITE, KITE PHARMA, and KITE and Design marks around the world across 57 countries, including:

KITE – U.S. Reg. No. 6,108,120 registered on July 21, 2020, covering “custom manufacturing services for others in the field of pharmaceuticals” in Class 40;

KITE PHARMA – EUTM Reg No. 13843206 registered on July 21, 2015, covering “pharmaceutical products for the prevention and treatment of cancer; immunotherapy products, namely, pharmaceutical preparations for the treatment of cancer and tumors; pharmaceutical preparations for T cell therapy; biological preparations for the treatment of cancer and tumors” in Class 5, “manufacturing services” in Class 40 and “Pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42;

KITE PHARMA – China Reg. No. 17908471 registered on October 28, 2016, covering “pharmaceutical preparations, including preparations for use in the treatment of cancer and tumors; pharmaceutical preparations for immunotherapy, including T Cell therapy” in Class 5, “processing of drug/medicinal ingredients; processing and handling of chemical reagents; custom assembling of materials (for others)” in Class 40 and “pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42;

KITE PHARMA – Iceland Reg. No. V0097844 registered on February 29, 2016, covering “pharmaceutical products for the prevention and treatment of cancer; immunotherapy products, namely, pharmaceutical preparations for the treatment of cancer and tumors; pharmaceutical preparations for T cell therapy; biological preparations for the treatment of cancer and tumors” in Class 5, “manufacturing services” in Class 40 and “Pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42;

KITE PHARMA – Australia Reg. No. 1718057 issued December 16, 2015, covering “Pharmaceutical preparations, including preparations for use in the treatment of cancer and tumors; pharmaceutical preparations for immunotherapy, including T Cell therapy” in Class 5, “manufacturing services” in Class 40 and “Pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42;

KITE PHARMA – Brazil Reg. No. 909997179 issued January 2, 2018, covering “Pharmaceutical preparations, including preparations for use in the treatment of cancer and tumors; pharmaceutical preparations for immunotherapy, including T Cell therapy” in Class 5, “Pharmaceutical manufacturing services” in Class 40 and “Pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42; and

KITE PHARMA – India Reg. No. 3051404 issued September 19, 2019, covering “Pharmaceutical preparations, including preparations for use in the treatment of cancer and tumors; pharmaceutical preparations for immunotherapy, including T Cell therapy” in Class 5, “Custom manufacture of pharmaceutical preparations for others” in Class 40 and “Pharmaceutical research and development; medical research, namely, clinical trial services” in Class 42.

Complainant is the owner of the domain name <kitepharma.com>, which was registered on June 11, 2009 and has been used by the company since as early as 2010.

The Disputed Domain Name was registered on March 16, 2021.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name contains Complainant’s well-known registered KITE and KITE PHARMA trademarks. Specifically, the Disputed Domain Name contains the KITE PHARMA trademark in full, simply adding a hyphen between KITE and PHARMA. Respondent registered the Disputed Domain Name containing the KITE and KITE PHARMA marks over ten years after Complainant entered the biopharmaceutical industry. The addition of the Top-Level Domain “.com” is irrelevant in determining whether the Disputed Domain Name is confusingly similar to the KITE mark.

Respondent is not associated or affiliated with Complainant and Complainant has not granted any rights to Respondent to use the KITE or KITE PHARMA marks. There is no indication that Respondent is commonly known by the KITE name.

Respondent has no rights or legitimate interests in the Disputed Domain Name, nor is Respondent currently using the Disputed Domain Name for any legitimate purpose. Respondent is using Complainant’s trademark for its own commercial purposes, seemingly to divert Internet traffic intended for Complainant to Respondent’s own website for its commercial gain or for a scam or phishing scheme.

Complainant’s mark is so well known and recognized in the pharmaceutical industry that there can be no legitimate use by Respondent.

When viewing the totality of the circumstances, Respondent’s acts overwhelmingly demonstrate bad faith use and registration. In particular, each of the following by itself is evidence of bad faith use and registration: 1) the intentional registration of a domain name consisting solely only of the KITE PHARMA trademark; 2) purposefully registering a domain with search terms to divert Internet users; 3) the use of a privacy shield to conceal Respondent’s contact information; 4) all in the context of Complainant’s longstanding trademark rights in KITE and KITE PHARMA.

A search on Google for the phone number listed in Respondent’s contact information shows that the number has been reported as connected with a Royal Mail scam.

Respondent had constructive knowledge of Complainant’s trademark and its rights due to Complainant’s worldwide trademark registrations covering the KITE mark. Given the well-known status of the KITE mark in the pharmaceutical industry and the overwhelming similarity to Complainant’s <kitepharma.com> domain name, Respondent was fully aware of Complainant’s rights in the KITE name when it registered the Disputed Domain Name.

Given the longstanding use of and registrations for KITE and KITE PHARMA, Complainant’s reputation in the pharmaceutical industry, and the near-identical Disputed Domain Name, Respondent’s bad faith can be assumed.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns registered trademark rights in the KITE and KITE PHARMA trademarks, that it has used the domain name <kitepharma.com> since 2009, and that no other entity has rights or uses the KITE PHARMA trademark. The addition of a hyphen between KITE and PHARMA does not prevent a finding of confusing similarity. The trademarks KITE and KITE PHARMA a clearly recognizable in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8, and Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).

Accordingly, the Disputed Domain Name is confusingly similar to marks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been generally known by the Disputed Domain Name; has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services; and, is not making a legitimate noncommercial of fair use of the Disputed Domain Name.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name.

In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after Complainant first registered and used its KITE and KITE PHARMA trademarks. The evidence on the record provided by the Complainant with respect to the extent of use of its KITE PHARMA trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s KITE PHARMA trademark, and knew that it had no rights or legitimate interests in the Disputed Domain Name.

There is prima facie no reason for the Respondent to have registered the Disputed Domain Name containing a misspelling of the entirety of the KITE PHARMA trademark. While the Disputed Domain Name does not resolve to an active website there is ample evidence of bad faith use on the part of the Respondent. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed Domain Name has been for illegitimate purposes. Accordingly, the Panel finds that Complainant has satisfied 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 <kite-pharma.com> be transferred to Complainant.

Colin T. O'Brien
Sole Panelist
Date: June 16, 2021