WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. John Cuban, Gilead Online Pharmacy

Case No. D2020-1254

1. The Parties

The Complainant is Gilead Sciences, Inc., United States of America (“United States”), represented internally.

The Respondent is John Cuban, Gilead Online Pharmacy, United States.

2. The Domain Name and Registrar

The disputed domain name <gileadonlinepharmacy.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2020, 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on July 8, 2020. 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

The Complainant was founded in 1987 in Foster City, California, United States. The Complainant is one of the world’s largest and most successful pharmaceutical companies with current worldwide revenues exceeding USD 22 billion. The Complainant employs over 12,000 persons worldwide. The Complainant maintains operations in the United States and numerous jurisdictions worldwide. The Complainant develops, manufactures, and offers for sale over twenty-five pharmaceutical products, including Biktarvy, Epclusa, Harvoni, and Truvada.

The Complainant owns 120 registrations for the mark GILEAD (the “Mark”) around the world. By way of example, the Complaint owns the trademark registration for GILEAD, United States Reg. No. 3251595, registered on June 12, 2007, in international class 5; GILEAD, United States Reg. No. 3665182, registered on August 4, 2009, in international classes 36 and 44.

The Complainant is the owner of the domain name <gilead.com>, which was registered on May 27, 1995. The Complainant owns approximately twenty-five additional Internet domain name registrations that incorporate the Mark.

The Respondent registered the disputed domain name on March 6, 2020. As of the filing of the instant Complaint, the disputed domain name resolved to a website offering for sale various biologic pharmaceuticals. The disputed domain name currently resolves to an auto-generated website offering links to websites peddling various pharmaceutical products.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Mark because the disputed domain name merely appends dictionary terms to the Mark. The Complainant asserts that the Complainant has never authorized the Respondent to use the Mark or the disputed domain name and that the Respondent has never been commonly known by the Mark or conducted any bona fide commercial business activity under the Mark or the disputed domain name. Finally, the Complainant asserts the disputed domain name was registered and is being used in bad faith to confuse and lure unsuspecting Internet users to the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.

The disputed domain name is composed of the Complainant’s mark plus two common dictionary words “online” and “pharmacy.” The appendage of dictionary terms does not dispel confusing similarity when attached to a widely recognized trademark. See WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). See also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323 (transferring <andersonhotellondon.org>); Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service Inc. / Name Redacted, WIPO Case No. D2017-0782 (transferring <phillipmorrisonusa.com>).

Moreover, “incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696. The composition of the disputed domain name, clearly containing the Mark, leads the Panel to find that the disputed domain name is confusingly similar to the trademark of the Complainant.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. The Respondent is using the disputed domain name to promote commercial services. The Respondent’s street address listed in the disputed domain name registration is false. See Desko GmbH v. Mustafa Mashari, WIPO Case No. D2015-0817 (transferring <desko.info> and noting that the Respondent’suse of a false address “reinforced” Respondent’s lack of legitimate interest in the domain name).

Additionally, because the disputed domain name contains the Complainant’s mark, with the appendage of two common dictionary terms related to the Complainant’s business, an inference thus arises that the disputed domain name was registered to suggest sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Accordingly, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to come forward with relevant evidence to show rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, at section 2.1.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and used in bad faith.

The Panel finds on the evidence presented that the Respondent has intentionally attempted in bad faith to lure and attract Internet users to the Respondent’s website for commercial gain. The disputed domain name initially resolved to a website offering competitive pharmaceutical products.

The disputed domain name as of this writing resolves to a website offering auto-generated links for pharmaceutical related products. SeeWIPO Overview 3.0, section 3.5 (“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name[.]”).

Moreover, the Mark is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant’s mark is so well known and recognized, there can be no legitimate use by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). Gilead Sciences, Inc. v. Brandon Bomberg, Twin Cities Holdings, WIPO Case No. D2020-0613 (transferring <gilead-sciences.club>, <gileadsciences.club>, <gilead-sciences.online>, <gilead-sciences.site>, <gileadsciences.site>, <gilead‑sciences.space>, <gileadsciences.space>, <gilead-sciences.website>, <gileadsciences.website>, <gilead-sciences.xyz>, and <gileadsciences.xyz>).

The Complainant has met its burden under 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 <gileadonlinepharmacy.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: July 22, 2020