Gilead Sciences, Inc. v. user bo7
Claim Number: FA2307002053974
Complainant is Gilead Sciences, Inc. (“Complainant”), represented by Cynthia Smuzynska of Gilead Sciences, Inc., California, USA. Respondent is user bo7 (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gileadireland.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 20, 2023; Forum received payment on July 20, 2023.
On July 20, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <gileadireland.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2023 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@gileadireland.com. Also on July 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant, founded in 1987 in Foster City, California, is one of the largest and most successful biopharmaceutical companies in the world. Complainant discovers, develops and commercializes innovative medicines in areas of unmet medical need.
Complainant has rights in the GILEAD mark through its registration with multiple trademark organizations worldwide including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <gileadireland.com> domain name is identical or confusingly similar to Complainant’s GILEAD mark as it incorporates the mark in its entirety while adding the geographic term “Ireland” and the “.com” top-level domain (“TLD”).
Respondent lacks rights and legitimate interests in the <gileadireland.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its GILEAD mark in the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead has used the at-issue domain name to feature material misappropriated from Complainant’s genuine website.
Respondent registered and uses the <gileadireland.com> domain name in bad faith. Respondent had knowledge of Complainant’s trademark when it registered <gileadireland.com> and used the domain name to host content copied from Complainant’s genuine website. Respondent intended to use the domain name to mislead consumers to believe that Respondent is an authorized office or affiliate of Complainant and to divert internet traffic intended for Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the GILEAD mark.
Respondent registered the at-issue domain name after Complainant acquired rights in GILEAD.
Complainant has not authorized Respondent to use Complainant’s trademark.
Respondent used the at-issue domain name to host content copied from Complainant’s website.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s multiple worldwide registrations for the GILEAD trademark, including registration with USPTO, demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <gileadireland.com> domain name contains Complainant’s GILEAD trademark followed by the geographic term “ireland” with all followed by the “.com” top-level domain name. The differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <gileadireland.com> domain name is confusingly similar to Complainant’s GILEAD trademark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “user bo7” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <gileadireland.com> domain. The Panel therefore concludes that Respondent is not commonly known by <gileadireland.com> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also, 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 at-issue 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).
Furthermore, Respondent used the confusingly similar <gileadireland.com> domain name to address a website displaying content taken from Complainant’s genuine website. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Farmlane Brands, LLC v. Helene Isbell Biggane / Hembra Genetics Collection, FA 1996757 (Forum July 12, 2022) (“[T]he website to which the disputed domain name resolves promotes similar goods as those of Complainant and will create a false impression of an online location either established by the Complainant or having an affiliation with the Complainant. Such illegitimate use of Complainant’s mark should not be considered bone fide.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent used the <gileadireland.com> domain name to host content lifted from Complainant’s genuine website. Doing so shows Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(a)(iii). See Yahoo Assets LLC v. Zanybh Solutions, FA 2022077 (Forum Dec. 12, 2022) (“As the Panel agrees that Respondent appears to be passing off as Complainant to draw Internet traffic, the Panel finds that Respondent lacks any bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the GILEAD mark when it registered <gileadireland.com> as a domain name. Notably, a prior panel has found that Complainant’s GILEAD trademark is “so well-known and recognized, there can be no legitimate use by the Respondent.” See Gilead Sciences, Inc. v. John Cuban, Gilead Online Pharmacy, WIPO Case No. D2020-1254 (July 22, 2020). Respondent’s prior knowledge of Complainant’s trademark, evident from the notoriety of Complainant’s GILEAD trademark, further indicates Respondent’s bad faith. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). See also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gileadireland.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 14, 2023
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