The Complainant is Gilead Sciences, Inc., United States of America (“United States”), internally represented.
The Respondent is Rajesh Nair M, Graffitopaints, India, self-represented.
The disputed domain name <gileadpharma.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2019. On May 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. The Response was filed with the Center on May 18, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 13, 2019. 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 established in 1987 in the United States. Since then, it has grown to be one of the largest biopharmaceutical companies in the world. The Complainant employs some 11,000 people world-wide. It is listed in the S & P 500 and at number 116 in the Fortune 500 Companies rankings. Amongst other things, it has marketing approval in the United States for 27 pharmaceutical treatments and has marketing subsidiaries in many countries, including Austria, Belgium, the Czech Republic, Denmark, Finland, France, Germany, Greece, Ireland, Italy, the Netherlands, Poland, Portugal, Spain, Sweden, the United Kingdom, Australia, Japan, China, the Republic of Korea, Canada and Mexico. In 2018, it had global revenues in the order of USD 22.1 billion. Some of its products are included in the World Health Organization’s List of Essential Medicines.
The Complaint includes evidence that the Complainant has numerous registered trademarks for GILEAD or marks which include that term. For present purposes, it is sufficient to mention only:
(a) European Union Trademark (EUTM) No. 003913167, GILEAD, which was registered on November 7, 2005 in respect of “Chemicals for use in science, scientific research and for laboratory use; analytical and diagnostic reagents for in vitro use“ in International Class 1; “pharmaceutical and veterinary preparations; chemical, analytical and diagnostic reagents for in vivo use; chemicals for use in medical research, and medical or veterinary diagnosis” in International Class 5; and “scientific, medical and industrial research and development services; clinical research; laboratory research; research and development of new drugs and clinical products; analysis of materials; chemical analysis; laboratory services; laboratory testing services; medical laboratory services; information and advisory services relating to the foregoing, including such services provided on-line from a computer network or the Internet” in International Class 42;
(b) United States Registered Trademark No. 3,251,595, GILEAD, which was registered on June 12, 2007 in respect of “pharmaceutical preparations, namely, antivirals, antifungals and preparations for the treatment of infectious conditions” in International Class 5;
(c) Indian Registered Trademark No. 2363685, GILEAD, which was registered as of July 13, 2012 in respect of pharmaceutical preparations in International Class 5; and
(d) Chinese Registered Trademark No. 10357628, GILEAD, registered on January 21, 2017 in respect of amongst other things “pharmaceutical preparations” in International Class 5.
These are just a few illustrative examples of the Complainant’s registered trademarks.
The Respondent is an individual who appears to be located in India and who claims to be a web designer.
The disputed domain name was registered on November 20, 2018.
At least for a time prior to the filing of the Complaint, the disputed domain name resolved to a website which purported to be the website of Gilead Pharma LLC which, according to the website, had been founded in 2010. The website had tabs for “Our Products” and “Our Partners” as well as “About Us” and “Contact Us”. The text on the homepage was in surprisingly ungrammatical English, but indicated the operator of the website was engaged in the medical industry.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for GILEAD referred to in section 4 above, amongst many others.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
The disputed domain name differs from the Complainant’s trademark by the addition of the alphanumeric string “pharma” and the gTLD, “.com”.
Disregarding the “.com” gTLD, therefore, the disputed domain name consists of the Complainant’s trademark and the essentially descriptive term “pharma”. The Complainant’s trademark is wholly contained in the disputed domain name. The “pharma” component does not dispel the visual and aural resemblance of the disputed domain name to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Respondent does not dispute these matters. In his Response, the Respondent states that he is a webmaster and registered the disputed domain name on behalf of a client. The Response states that, once the dispute with the Complainant arose, the client informed the Respondent that it had ceased using the website and had deleted the disputed domain name.
These matters, taken together, are sufficient to establish a clear prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. That case has not been rebutted. To the contrary, the Respondent and his client appear to have accepted it. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given how long the Complainant has been using its trademark, the scale of that use and the renown associated with its research and products, it seems most unlikely that anyone would adopt the term “Gilead Pharma” without an awareness of the Complainant and its activities.
Moreover, the word “pharma” is a common colloquialism for pharmaceutical products or services, or companies which provide pharmaceutical products or services. Further, the text on the Respondent’s, or his client’s, former website makes it plain that “pharma” was intended to convey an association with the medical industry.
While “Gilead” is or can be a biblical reference, it is not at all directly descriptive of the medical industry or pharmaceutical products in general. The term “Gilead” has significance in relation to pharmaceutical products and the medical industry only because of its use and the reputation developed in it by the Complainant.
It appears, therefore, that the Respondent, or his client, registered the disputed domain name because of its trademark significance. In circumstances where the Respondent has not sought to claim, let alone establish, that he has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered it in bad faith.
Furthermore, the use of the disputed domain name to resolve to a website purporting to be that of “Gilead Pharma LLC”, a company or business which is not associated with the Complainant in any way is use in competition with the Complainant which is likely to create confusion as to association with the Complainant. In these circumstances, therefore, it is use in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under the Policy.
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 <gileadpharma.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: June 26, 2019
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