Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Bicovs Evgenijs, RDN.name
Claim Number: FA1606001680249
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Bicovs Evgenijs, RDN.name (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genericsovaldi.org>, registered with OnlineNIC, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2016; the Forum received payment on June 20, 2016.
On June 21, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <genericsovaldi.org> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 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@genericsovaldi.org. Also on June 21, 2016, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 made the following contentions.
1. Complainant Gilead Sciences, Inc., a United States company and its subsidiary Gilead Sciences Ireland UC (hereinafter collectively referred to as “Complainant”) are engaged in the development and manufacture of innovative medicines for people with life-threatening illnesses around the world.
2. Complainant has developed a successful pharmaceutical product named sofosbuvir for treating chronic Hepatitis C virus (“HCV”) and received U.S. Food and Drug Administration approval to introduce it to market under the name SOVALDI. The SOVALDI medication is available by prescription only and has achieved wide media and public recognition because of its efficacy.
3. Complainant has registered the SOVALDI mark with multiple trademark authorities including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,468,665, registered Jan. 21, 2014), which establishes its rights in the mark. See Compl., at Attached Ex. 8. Complainant uses the SOVALDI mark to market and promote its SOVALDI medication. Respondent’s <genericsovaldi.org> domain name is confusingly similar to the SOLVADI mark as it incorporates the SOVALDI mark entirely and merely adds the descriptive and non-distinctive word “generic,” together with the generic top-level domain (“gTLD”) “.org.”
4. Respondent has no rights or legitimate interests in the <genericsovaldi.org>
domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the SOVALDI mark. See Compl., at Attached Ex 4. Further, Respondent is not making a bona fide offering of goods or services by redirecting consumers who are seeking information regarding the SOVALDI medication to a website that purports to offer counterfeit or fake medication without a doctor’s prescription. Respondent is also attempting to pass itself off as Complainant, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).
5. Respondent registered and is using the domain name in bad faith as the fame and unique qualities of the SOVALDI mark make it extremely unlikely that Respondent created the domain name independently. Moreover, even constructive knowledge of a famous mark like SOVALDI is sufficient to establish registration in bad faith. Moreover, as the domain name fully incorporates Complainant’s famous SOVALDI mark, it is impossible to conceive of any potential legitimate use of the domain name, which shows opportunistic bad faith by Respondent. Respondent’s conduct is designed to attract customers based on confusion, which demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is engaged in the pharmaceutical industry and has developed a successful pharmaceutical product branded SOVALDI for the treatment of Hepatitis C.
2. Complainant has established its rights in the SOVALDI mark by its registration of the mark with the USPTO (e.g., Reg. No. 4,468,665, registered Jan. 21, 2014). See Compl., at Attached Ex. 8.
3. Respondent registered the disputed domain name on July 8, 2015, after Complainant established rights in its SOVALDI mark.
4. The domain name resolves to a website where Respondent passes itself off as Complainant and which purports to offer counterfeit or fake SOVALDI medication for sale without a doctor’s prescription.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the SOVALDI mark in connection with its business of developing and manufacturing its successful pharmaceutical product sofosbuvir for treating chronic Hepatitis C virus (“HCV”), marketed under the name SOVALDI. Complainant submits that it has registered the SOVALDI mark with USPTO (e.g., Reg. No. 4,468,665, registered Jan. 21, 2014), and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the SOVALDI mark, irrespective of Respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainants rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel agrees with that submission. Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the SOVALDI mark, notwithstanding Respondent’s reported residence in Latvia.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SOVALDI mark. Complainant argues that Respondent’s <genericsovaldi.org> domain name is confusingly similar to the SOVALDI mark as it incorporates the mark entirely and has added to it merely the descriptive and non-distinctive word “generic” and the gTLD “.org.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Roche Products Inc. v. Jatin Jani / Expired Domains LLC, FA1107001398013 (Forum Aug. 22, 2011) (finding <genericvalium.us> confusingly similar to the VALIUM trademark); see also Hoffmann-La Roche Inc. v. Alan Truskowski, FA0609000808287 (Forum Nov. 14, 2006) (finding [r]espondent’s domain name, <genericxenical.us> confusingly similar to Complainant’s XENICAL mark ; see also See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). An objective bystander would undoubtedly think that the disputed domain name was related in some way to the SOVALDI trademark and the product marketed under that name. Accordingly, the Panel finds that Respondent’s <genericsovaldi.org> domain name is confusingly similar to the SOVALDI mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SOVALDI mark and to
use it in its domain name, adding only the descriptive and non-
distinctive word “generic;”
(b) Respondent registered the disputed domain name on July 8, 2015;
(c)The domain resolves to a website where Respondent passes itself off as Complainant and which purports to offer counterfeit or fake SOVALDI medication without a doctor’s prescription;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <genericsovaldi.org> domain name. Complainant submits that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SOVALDI mark. The Panel notes Complainant’s Attached Ex. 4, the WHOIS information regarding the disputed domain name, listing “Bicovs Evgenijs” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See 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 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 AIRLINE mark);
(e) Complainant also submits that Respondent is not making a bona fide offering of goods or services, nor a legitimate non-commercial or fair use, through the <genericsovaldi.org> domain name by redirecting consumers who are seeking information regarding Complainant’s SOVALDI medication to a website that purports to offer counterfeit or fake SOVALDI medication without the need for a doctor’s prescription. The Panel agrees with that submission and so finds. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“[A] registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct to an on-line pharmacy”). Moreover, prominently featuring the SOVALDI mark and making repeated uses of Complainant’s name on its website constitutes passing off by Respondent; See Google Inc. v. Zharkov Maxim / Aleksey Lebedev, FA1306001506108 (Forum Sep. 2, 2013) (“Respondent attempts to pass himself off as Complainant. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).”).
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.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, and that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and is using the domain name in bad faith as the fame and unique qualities of the SOVALDI mark are such that it is extremely unlikely that Respondent created the domain name independently. The Panel agrees with that submission and finds that Respondent had actual notice of the existence of Complainant’s trademark at the time Respondent registered the domain name. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration.”).
Secondly, Complainant argues that given that the domain name fully incorporates its famous SOVALDI mark, it is impossible to conceive of any potential legitimate use of the domain name and that as such, the domain name is being used in bad faith. The Panel agrees. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of complainant's trademark…Respondent has provided no evidence or suggestion of a possible legitimate use…Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.”); see also Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May 31, 2004) (finding that registrant’s “passive use” amounted to bad faith use due to the fame of the complainant’s mark and lack of evidence of any good faith).
Thirdly, Complainant submits and the Panel agrees, that where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). That is exactly what has happened in the present case as Respondent could only have set up its website, passed itself off as Complainant and sought to confuse consumers if it knew of the fame and efficacy of Complainant’s famous product and wanted to mislead the public. This is classic bad faith. See Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
Fourthly, Complainant submits that Respondent’s operation of a website under the SOVALDI mark purportedly offering for sale a drug used for targeting the Hepatitis C virus in direct competition with Complainant’s product – along with its prominent and repeated use of Complainant’s name and SOVALDI mark throughout the website – indicate that Respondent registered and is using the domain name in bad faith to disrupt Complainant’s business, take unfair advantage of Complainant’s goodwill in the SOVALDI Mark and attract customers based on confusion and that this demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel agrees and observes that such conduct is particularly bad in the case of fake or counterfeit products which may have dire consequences for human health and well-being. See Sanofi-Aventis v. Igor Peklov, WIPO Case No. D2008-1419 (November 27, 2008) (“[U]se of the disputed domain name for an online pharmacy site on which the respondent sells a large variety of drugs including counterfeit products and placebo products clearly indicates that respondent's primary intent was to redirect Internet users to his website and thus capitalizing on the goodwill of complainant's trademark”); see also Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (October 17, 2004) (concluding the mark VIAGRA was so obviously connected with the complainant and its products, that its use by respondent to market the generic equivalent constituted “opportunistic bad faith”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <genericsovaldi.org> domain name using the SOVALDI mark and in view of the conduct that Respondent engaged in when using the domain name, which is illegal and potentially very dangerous to consumers, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <genericsovaldi.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 25, 2016
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