WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Gilead Sciences, Gilead Sciences India Limited

Case No. D2020-1704

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Gilead Sciences, Gilead Sciences India Limited, India.

2. The Domain Name and Registrar

The disputed domain name <gilead-india.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 6, 2020.

The Center verified that the Complaint, together with the amendment to 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on August 5, 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

Complainant was founded in 1987 and is one of the largest and most successful biopharmaceutical companies. Per Complaint, Complainant’s total worldwide revenue in 2019 was approximately USD 22.4 billion, while Complainant was listed as number 139 in the Fortune 500 Companies rankings in the same year. Complainant is a member of the S&P 500 and has over 12,000 employees worldwide. Complainant has a wholly owned subsidiary in India by the name of Gilead Sciences India Private Limited, which was established in 2014 and sells numerous products in that country.

Complainant is the owner of inter alia the following trademarks:

- Indian trademark registration No. 2363685 GILEAD (word mark) filed on July 13, 2012 and registered on September 10, 2015, for goods in international class 5; and

- United States trademark registration No. 3,251,595, GILEAD (word mark) filed on August 1, 2006, first use in commerce April 7, 1989 and registered on June 12, 2007, for goods in international class 5.

Complainant is also the owner of the domain name registration <gilead.com> registered on May 27, 1995 which has been used by Complainant since 1997 in connection with its pharmaceutical products and related medical services.

The Domain Name was registered on January 19, 2020, and was used, as Complainant demonstrated, to host a website (the “Website”) which was a mostly blank page but referred to “sponsored listings”. Currently it resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the GILEAD mark.

The Panel finds that the Domain Name <gilead-india.com> is confusingly similar with the GILEAD trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the hyphen “-” between the two words “gilead” and “india” does not avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The word “india” which is added in the Domain Name does not prevent a finding of confusing similarity (WIPO Overview, section 1.8).

The generic Top-Level Domain (“gTLD”) “.info” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

There is no evidence that Respondent has been commonly known by the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website which contained sponsored listings and currently resolves to an inactive page.

In addition, the Domain Name consists of Complainant’s mark and the geographic term “india”, and thus carries a risk of implied affiliation (WIPO Overview, section 2.5.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because the GILEAD mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Diorv.Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also follows from the fact that Respondent registered the Domain Name under “Gilead Sciences, Gilead Sciences India Limited.” namely a name practically identical to the name of Complainant’s affiliate in India.

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of GILEAD (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

As Complainant demonstrated, the Domain Name was initially used to post “sponsored listings” which suggested that Respondent was seeking to extract click-through income from the attempts made by Internet users searching for Complainant. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).

The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <gilead-india.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: August 19, 2020