Gilead Sciences, Inc., Gilead Sciences Ireland UC and Bristol-Myers Squibb & Gilead Sciences, LLC v. Nermin Hadzikadunic / Findmaster Marketing Inc.
Claim Number: FA1607001684675
Complainant is Gilead Sciences, Inc., Gilead Sciences Ireland UC and Bristol-Myers Squibb & Gilead Sciences, LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Nermin Hadzikadunic / Findmaster Marketing Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-atripla.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2016; the Forum received payment on July 20, 2016.
On July 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buy-atripla.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buy-atripla.com. Also on July 21, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainants, Gilead Sciences, Inc., Gilead Sciences Ireland UC and Bristol-Myers Squibb & Gilead Sciences, LLC, develop and manufacture medicines. Complainants use the ATRIPLA mark as the name for a drug that was developed to treat human immunodeficiency virus (“HIV”). Complainants’ rights in the ATRIPLA mark stem from registrations of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,276,743, registered Aug. 7, 2007). Respondent’s domain, <buy-atripla.com>, is confusingly similar to the ATRIPLA mark. The domain merely adds the non-distinctive term, “buy,” which is not sufficient to avoid a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Respondent has not been authorized or licensed to use Complainants’ marks. Respondent’s previous use of the domain, to offer counterfeit or fake medication without a prescription, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used the disputed domain in bad faith. Respondent previously using the domain to resolve to a website attempting to sell generic, and likely counterfeit, medications demonstrates bad faith disruption of Complainant’s business. Further, Respondent likely had knowledge of Complainants’ rights in the ATRIPLA mark based on the fame of the mark and the fact that the name is a fanciful term with no meaning outside of its association with Complainants.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant’s rights in the ATRIPLA mark are established by registrations of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,276,743, registered Aug. 7, 2007).
2. Complainant uses the ATRIPLA mark as the name for a drug that was developed to treat human immunodeficiency virus (“HIV”).
3. Respondent registered the disputed domain name on May 5, 2011.
4. Respondent previously used the domain name to resolve to a website attempting to sell generic, and likely counterfeit, medications and it presently resolves to a website featuring an Error message.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are three Complainants in this matter: Gilead Sciences, Inc., Gilead Sciences Ireland UC and Bristol-Myers Squibb & Gilead Sciences, LLC. Gilead Sciences Ireland UC is a subsidiary of Gilead Sciences, Inc. Bristol-Myers Squibb & Gilead Sciences, LLC is a joint venture between Gilead Sciences, Inc., and the Bristol-Myers Squibb Company. This joint venture resulted in the creation of the first once-daily single tablet regimen to combat HIV. The drug created by the joint venture has been sold, marketed, and known by the name ATRIPLA.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding and refer to them collectively as “Complainant.”
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the ATRIPLA mark in connection with the marketing and sale of a drug used to treat HIV. Complainant claims to have rights in the ATRIPLA mark based on registration of the mark with multiple trademark agencies throughout the world including the USPTO (e.g., Reg. No. 3,276,743, registered Aug. 7, 2007). See Compl., at Attached Ex. 7. Panels routinely hold, and this Panel holds, that registration of a mark with the USPTO adequately demonstrates a registrant’s rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ATRIPLA mark. Complainant submits that Respondent’s <buy-atripla.com> domain is confusingly similar to the ATRIPLA mark in which Complainant asserts rights. Respondent’s domain name differs from the ATRIPLA mark through the addition of the term “buy,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” Panels have held that adding a generic term to a mark in a domain name does not negate confusing similarity which is otherwise present as it is in the present case. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Panels have also held that the presence of punctuation and gTLDs is not relevant to an analysis of confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel finds that the <buy-atripla.com> domain name is confusingly similar to the ATRIPLA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ATRIPLA
mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on May 5, 2011;
(c) Respondent previously used the domain name to resolve to a website attempting to sell generic, and likely counterfeit, medications, as shown by historic screenshots and it presently resolves to a website featuring an Error message;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized or licensed to use any of Complainant’s marks. WHOIS information associated with the disputed domain name identifies Respondent as “Nermin Hadzikadunic,” which does not appear to resemble the disputed domain name. See Compl., at Attached Ex. 4. Panels have found a respondent not to be commonly known by a disputed domain name based on WHOIS information and a lack of authorization to use a mark in a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant next argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Currently Respondent’s domain name resolves to a website displaying error messages indicating that the user is forbidden from accessing the domain name. See Compl., at Attached Ex. 8. Previously, as shown by historic screenshots, the domain name was used to give information about Complainant’s drug ATRIPLA and to provide links to buy the drug or generic versions of the drug. See id. Complainant believes and claims that if Respondent was selling drugs through this website the drugs would have been counterfeit. See Compl., at ¶ 29. Panels have found that using another’s mark to sell counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Additionally, even if Respondent were selling a generic version of Complainant’s drugs this would also not be a bona fide offering of goods or a legitimate noncommercial or fair use. See F. Hoffmann-La Roche AG v. Whoisguard Protected / Sallu Org, Salman Baig, D2014-0480 (WIPO June 9, 2014) (ordering transfer of a domain incorporating the VALIUM mark where domain led to a website purporting to offer generic VALIUM). The Panel thus concludes that Respondent’s prior use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s previously using the domain name to resolve to a website attempting to sell generic, and likely counterfeit, medications demonstrates bad faith disruption of Complainant’s business. As stated above and as shown by historic screenshots Respondent’s domain name previously resolved to a website that offered generic versions of Complainants’ drug. See Compl., at Attached Ex. 8. Complainant submits and believes that if drugs were indeed sold through the disputed domain name they must have been counterfeit versions of Complainants’ drug. See Compl., at ¶ 29. Panels have held that using a confusingly similar domain name to sell counterfeit goods disrupts a complainant’s business in bad faith. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). As the Panel finds that Respondent attempted to sell counterfeit goods through the disputed domain name it finds that such action demonstrates bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent likely had knowledge of Complainant’s rights in the ATRIPLA mark based on the fame of the mark and the fact that the name is a fanciful term with no meaning outside of its association with Complainant. Complainant also contends, based on the fame of the mark and the fact that the name is a fanciful term with no meaning outside of its association with Complainant, that it is inconceivable that Respondent could have registered the domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here notes that arguments of bad faith based on constructive notice have generally not been successful. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <buy-atripla.com> domain name using the ATRIPLA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buy-atripla.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 18, 2016
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