DECISION

 

Gilead Sciences, Inc. v. CATCHDADDY LLC / Registration Private

Claim Number: FA2311002072247

 

PARTIES

Complainant is Gilead Sciences, Inc. ("Complainant"), represented by Cynthia Smuzynska of Gilead Sciences, Inc., California, USA. Respondent is CATCHDADDY LLC / Registration Private ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gileadmedplus.com>, registered with Dynadot Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 24, 2023; Forum received payment on November 24, 2023.

 

On November 25, 2023, Dynadot Inc confirmed by e-mail to Forum that the <gileadmedplus.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 November 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@gileadmedplus.com. Also on November 27, 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 December 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is one of the largest and most successful biopharmaceutical companies in the world. Through longstanding use and the tremendous success of its products, Complainant's mark GILEAD has gained significant recognition in the United States and throughout the world. Complainant claims rights in the GILEAD mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,251,595, registered on June 12, 2007). The disputed domain name is confusingly similar to Complainant's GILEAD mark as it wholly incorporates the mark and merely adds the descriptive abbreviation "med," the laudatory term "plus," and ".com" gTLD.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GILEAD mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Instead, Respondent's attempt to sell the disputed domain name for $25,000 can be seen for no other purpose than wrongfully diverting traffic for its own commercial gain and scam, which is bad faith, not a legitimate use of the disputed domain name.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered and uses the disputed domain name in bad faith by seeking to capitalize on Complainant's long-standing, well-known, and distinctive GILEAD mark. Respondent had constructive knowledge of Complainant's rights in the GILEAD mark before its registration of the disputed domain name and offers the disputed domain name for sale for an amount far in excess of the out-of-pocket registration fee.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 24, 2023.

 

2. Complainant has established rights in the GILEAD mark through its registration. with the USPTO (e.g., Reg. No. 3,251,595, registered on June 12, 2007).

 

3. The disputed domain name remains inactive.

 

4. Respondent is offering the disputed domain name for sale at an amount of  $25,000.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the GILEAD mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,251,595, registered on June 12, 2007). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i).  Since Complainant provides evidence of registration of the GILEAD mark with the USPTO, the Panel finds Complainant has established rights in the GILEAD mark per Policy ¶ 4(a)(i).

 

Complainant next argues that the disputed domain name <gileadmedplus.com> is confusingly similar to the GILEAD mark because it incorporates the mark in its entirety and only adds the descriptive abbreviation "med," the laudatory term "plus," and ".com" gTLD. The use of a mark in its entirety with the mere addition of a descriptive term or a gTLD fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) ("When a respondent's domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), ".com", then the Panel may find that the disputed domain name is identical to Complainant's mark."); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).").  Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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").

 

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not associated or affiliated with Complainant. Complainant has not granted any rights to Respondent to use the GILEAD mark, whether a license to sell any products or offer any services, or any rights to register the disputed domain name.

 

Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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 notes that the WHOIS information for the disputed domain name lists the registrant as  "CATCHDADDY LLC / Registration Private." Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant's mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name remains inactive and resolves to a "for sale" webpage offering it for $25,000. The Panel notes that the use of the disputed domain name which is confusingly similar to Complainant's well-known mark to sell it for the amount of out-of-pocket expense does not constitute a bona fide offering of goods or services or any legitimate non-commercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) ("Accordingly, the Panel finds that Respondent's general attempt to sell the disputed domain name is further evidence of Respondent's lack of rights and legitimate interests under Policy ¶ 4(a)(ii).").

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent is offering to sell the disputed domain name, and a general offer for sale may be sufficient to establish registration and use in bad faith per Policy ¶ 4(a)(iii). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) ("Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale.  The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i)."). Further, the offer is for a price far in excess of the out-of-pocket registration fee. An offer to sell a disputed domain name with an inflated price may act as further evidence of bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i)."); see also Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) ("Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i)."). Complainant has provided a screenshot of the disputed domain name's resolving webpage offering the disputed domain name for $25,000. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith.

 

Complainant further contends that Respondent had constructive knowledge of Complainant's mark and its rights due to Complainant's longstanding worldwide trademark registrations covering the GILEAD mark. Respondent is fully aware of Complainant's business, as well as its goodwill in the GILEAD mark in the medical field, and registered the disputed domain name in bad faith. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant's rights in the mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."). The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the GILEAD mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <gileadmedplus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: December 21, 2023