Gilead Sciences, Inc. v. VLADIMIR LENCHITSKY / TARGET LOGIX LLC
Claim Number: FA1606001678718
Complainant is Gilead Sciences, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., USA. Respondent is VLADIMIR LENCHITSKY / TARGET LOGIX LLC (“Respondent”), represented by Leo V. Gureff of MUNCY, GEISSLER, OLDS & LOWE, P.C., Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hepatitishope.com>, registered with eNom, Inc.
The undersigned certify they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Dennis A. Foster, Sandra J. Franklin, and Houston Putnam Lowry, Chartered Arbitrator (chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 8, 2016; the Forum received payment on June 8, 2016.
On June 9, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <hepatitishope.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@hepatitishope.com. Also on June 14, 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.
A timely Response was received and determined to be complete on July 1, 2016.
On July 6, a timely Additional Submission from Complainant was received.
On July 11, a timely Additional Submission from Respondent was received.
On July 13, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Dennis A. Foster as Panelist; Sandra J. Franklin as Panelist; and Houston Putnam Lowry, Chartered Arbitrator as Panelist and chair.
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.
Complainant claims Respondent, VLADIMIR LENCHITSKY / TARGET LOGIX LLC, failed to respond in this proceeding, because the Response received was from Pharmacy Patient Advocacy Network (“PPAN”), thereby leaving Respondent, VLADIMIR LENCHITSKY / TARGET LOGIX LLC, in default. Complainant claims the Response has not established that the original Respondent is an authorized representative of PPAN, or that the disputed <hepatitishope.com> domain name is controlled by PPAN.
Respondent rejects these contentions of Complainant, and instead, swears, “Target Logix” is a company retained by Respondent PPAN to maintain the disputed domain name, and that Complainant was aware of PPAN’s ownership of the domain name due to a letter dated April 15, 2016.
Forum has not indicated Respondent’s Response or Additional Response are formally deficient. Even if they were procedurally deficient, prior panels have accepted deficient responses for consideration in proceedings when such submissions contain relevant and useful information to make findings. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (deciding to consider a deficient Response because it provided information that that the panel believed would be helpful in making its decision). Therefore, the Panel will consider the Response and Additional Response.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information:
Complainant Gilead Sciences, Inc. (“Gilead” or “Complainant”) was founded in 1987 in Foster City, California, and is a research-based biopharmaceutical company that discovers, develops, and commercializes innovative medicines in areas of unmet medical need. It is one of the largest biopharmaceutical companies in the world. Gilead maintains operations in the US and internationally, with marketing subsidiaries in a number of countries, including within the EU, Austria, Belgium, the Czech Republic, Denmark, Finland, France, Germany, Greece, Ireland, Italy, the Netherlands, Poland, Portugal, Spain, Sweden, and the UK. In 2015, Gilead’s total worldwide revenue was approximately USD $32.6 billion. In 2015 and 2016, Gilead was listed as #118 in the Fortune 500 Companies rankings, #31 in Business Insider’s list of The 50 Best Companies to Work for in America, and #11 in Barron’s 100 The World’s Most Respected Companies: A Complete Ranking. Gilead’s HARVONI® drug was touted as the “one hit wonder” of hepatitis medications.
Gilead owns exclusive rights to the HEP C HOPE® trademark, including rights secured through (a) common law use from providing information about hepatitis c, treatment options, and resources that are offered in the community, and (b) registration on the U.S. PTO principal register at U.S. Reg. No. 4,822,990, which was filed on February 17, 2014, in Class 35 for “promoting public awareness of treatment for Hepatitis C.” Gilead is also the owner of the domain name <hepchope.com>, which was registered on October 31, 2013, and has been used by the company since at least as early as February 2014, in connection with its promotion of public awareness for the treatment of hepatitis c.
FACTUAL AND LEGAL GROUNDS
Knowing of Gilead and its exclusive rights in the HEP C HOPE® trademark, on August 5, 2015, Respondent registered the Domain Name, <hepatitishope.com>, in order to direct consumers to a website entitled “HEPATITIS HOPE,” which provides information about various hepatitis C medications, including Gilead’s famous HARVONI® and SOVALDI® medications, and purports to offer a “Hepatitis Prescription Assistance Program.”
Respondent’s <hepatitishope.com> website prominently uses the HEPATITIS HOPE mark, which is nearly identical to Gilead’s registered HEP C HOPE® trademark, without permission from or authorization by Gilead. The term HEPATITIS is the full spelling of the abbreviated term HEP. This unauthorized use of Gilead’s HEP C HOPE® trademark is clearly meant to attract visitors to Respondent’s website, generate customers for Respondent’s services and/or products, and wrongfully suggest an association with Gilead. Respondent is using a mark nearly identical to Gilead’s HEP C HOPE® trademark—HEPATITIS HOPE— in addition to Gilead’s HARVONI® and SOVALDI® trademarks, to improperly trade off of the immense goodwill of Gilead’s famous trademarks. Gilead had net sales of more than $20 billion dollars in 2015 for its HARVONI® and SOVALDI® hepatitis treatment drugs. Complainant’s ground- breaking hepatitis treatments are truly synonymous with and give hepatitis patients hope with their high success rate. Gilead is a top manufacturer of hepatitis medications and is a trusted source in treatment of this condition.
Given the highly profitable market for hepatitis treatment and Gilead’s strong position therein, it is clear that Respondent intentionally adopted a mark and domain name that is nearly identical to Gilead’s registered HEP C HOPE®.
Upon learning of Respondent’s registration of the <hepatitishope.com> domain, Gilead notified Respondent of Gilead’s prior rights in the HEP C HOPE® mark and requested that it cease use of the domain name in order to prevent confusion in the marketplace among its consumers. Respondent replied to the letter by phone on March 28, 2016, asserting that it is a non-profit organization that refers consumers to other non-profit organizations. Upon further discussion, Respondent unfoundedly asserted that because it is a non-profit organization, it could not be liable for infringement.
Respondent formally replied to Gilead’s letter on April 15, 2016, stating that the Pharmacy Patient Advocacy Network (the “PPAN”) owns and operates the <hepatitishope.com> domain and claiming that it uses the site to offer help to non-insured or underinsured hepatitis patients and their families to receive the proper medical and treatment assistance. Respondent offers the same informational services that Gilead offers on its <hepchope.com> website and purports to offer the same support services that Gilead offers on its <mysupportpath.com> website. Given the high similarity of the marks and the overlap in services offered in connection therewith, it is clear that Respondent selected the Domain Name to create a false association with Complainant.
On further review of the services offered by PPAN at the Domain Name, there is further concern that Respondent is not providing the services it purports to provide and is instead using the confusingly similar Domain Name to collect data from Gilead’s current and potential customers, all in bad faith. In addition to PPAN’s assertion that it offers help “to non-insured or underinsured hepatitis patients and their families to receive the proper medical and treatment assistance,” the website claims that it offers a “Hepatitis Prescription Assistance Program” to cover a number of hepatitis c medications. However, no help is being offered, as the phone number published on the site does not appear to be active. Despite numerous attempts to call the phone number listed on the Domain Name over a period of months, each resulted in approximately three to four rings followed by a busy signal—all calls were disconnected; not one call was ever answered. However, the website invites visitors to “Request Assistance” by inputting personal identifying information, including the individual’s name, phone number, e-mail address, state, and medication.
The existence of this form in connection with an inactive phone number evidences bad faith and creates a strong concern that Respondent’s website is phishing for Gilead’s potential or current customers’ contact information. Gilead is further concerned that confusion between its highly-researched and effective services and those of PPAN, which are ineffective and possibly fraudulent, could even create health risks in a community of consumers seeking urgent, immediate information and treatment for severe, life-threatening medical conditions.
In further communications with Respondent, Complainant also learned that PPAN operates or is affiliated with a chain of pharmacies. These pharmacies seemingly sell Gilead’s HARVONI® and SOVALDI® pharmaceuticals. Upon information and belief, Respondent is using its Domain Name to collect targeted data for consumers interested in purchasing the hepatitis c pharmaceuticals that are valued at billions of dollars per year, by trading off the goodwill associated with Gilead’s HEP C HOPE® mark and purporting to offer assistance in obtaining hepatitis medication, which consumers are unlikely to obtain given that Respondent’s published phone number is inactive.
Upon information and belief, Complainant further believes that Respondent has attempted this same bad faith scheme previously. Just last year, Complainant was successful in a UDRP claim against the <harvonihelp.com> domain—another domain that purported to offer a “Hepatitis Prescription Assistance Program” for Gilead’s famous HARVONI® and SOVALDI® brands. In comparing the Domain Name at issue here, <hepatitishope.com>, with the <harvonihelp.com> domain, the content is nearly identical. The evidence suggests that Respondent owns both the <harvonihelp.com> domain that was transferred to Gilead in a UDRP and the <hepatitishope.com> Domain Name, which is again confusingly similar to the Gilead trademark HEP C HOPE® and was registered in bad faith and without legitimate interests.
While both the previously infringing <harvonihelp.com> domain name and the <hepatitishope.com> Domain Name were registered under privacy protection, the similarities between the websites are too extreme to be coincidental and are clearly owned by the same Registrant. For example, (i) both domains refer to their program as the “Hepatitis Prescription Assistance Program,” (ii) both offer help with the same 4 drugs (HARVONI®, SOVALDI®, OLYSIO®, VIEKIRA PAK®), (iii) both are based out of Los Angeles, (iv) both domains are registered with Enom and are WHOISGUARD PROTECTED in Panama, (v) the text of the disclaimer on both sites is the exact same, (vi) the privacy policies on both domains are verbatim, both domains use the exact same text to describe the four hepatitis c drugs, and (viii) both domains use nearly identical forms with the same default text.
Respondent’s intentional and conspicuous use of the confusingly similar HEPATITIS HOPE mark in the Domain Name is likely to cause consumers to be confused into believing that Gilead is somehow affiliated with or endorses the <hepatitishope.com> website and services. Respondent’s actions have caused, and continue to cause, significant harm to Gilead’s business and to Internet users wanting to obtain Gilead’s products and services.
Under Section 4(a) of the UDRP, an administrative proceeding resulting in the transfer of a domain name to the complainant is required where (i) the domain name is identical or confusingly similar to the trademark in which the complainant has rights, (ii) the domain name holder has no rights or legitimate interests in the domain name, and (iii) the domain name has been registered and is being used in bad faith. As will be more fully explained below, Gilead has made the necessary showing requiring the Domain Name to be transferred.
a. The Domain Name Registered by Respondent Is Confusingly Similar to a Mark in which Gilead Has Rights
Gilead has been offering its services under its HEP C HOPE® trademark since February 24, 2014 and applied to register the HEP C HOPE® trademark on February 17, 2014, long before Respondent registered the Domain Name on August 5, 2015. Respondent’s use of the HEPATITIS HOPE mark is clearly confusingly similar to Complainant’s HEP C HOPE® mark and creates the same commercial impression. The mere addition of the full spelling of the HEP abbreviation and the removal of the letter “C,” does not alleviate Respondent of its infringement or bad faith, nor does it prevent confusion. Minute modifications to a third party’s trademark are not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). Abbreviating or spelling out Complainant's mark will not preclude a finding of confusing similarity. See, e.g., Drs. Foster & Smith, Inc. v. Jaspreet Lalli, FA 95284 (Forum Aug. 21, 2000) (ordering transfer of the drfostersmith.com domain after finding that minute changes to Complainant’s mark in Respondent’s deletion of the letter "s" and abbreviation of the word "doctor" to "dr" do not elude the confusing similarity test and holding that the domain name drfostersmith.com is confusingly similar to the DOCTORS FOSTER & SMITH mark); Perot Systems Corporation v. Stephen Hall, FA 95310 (Forum Aug. 29, 2000) (ordering transfer of the perotsys.com domain after finding it is clearly intended to be an abbreviation or reference to Complainant’s PEROT SYSTEMS mark and PEROTSYSTEMS.COM domain and determining that the similarities will cause consumers to presume the domain name is affiliated with the Complainant); CIMCities LLC v. None aka Hamid Shojaee, FA 95606 (Forum Oct. 19, 2000) (ordering transfer of the accessaz.com domain after finding it is clear that the domain name is confusingly similar to Complainant’s ACCESSARIZONA.COM mark); and Walter W. Cribbins Company Inc. v. Providence Communications, Inc., FA 95399 (Forum Sept. 14, 2000) (ordering transfer of the waltercribbins.com domain after finding it confusingly similar to Complainant’s WALTER W. CRIBBINS CO. mark because it is composed of the dominant terms of the Complainant’s mark, the words "Walter" and "Cribbins.”).
Here, the term HEP is a known abbreviation for the term HEPATITIS and both Complainant and Registrant are using the marks to offer services regarding awareness of hepatitis c treatments. Respondent’s Domain Name clearly refers to HEP C and also includes the exact same dominant term HOPE. Respondent’s domain name <hepatitishope.com> could not be more similar to Complainant’s HEP C HOPE trademark without being identical. There is no doubt that Respondent’s adoption and use of the Domain Name is intended to conjure up Complainant’s registered mark in the mind of consumers.
Furthermore, the addition of the top-level domain “.com” is irrelevant in determining whether the Domain Name is confusingly similar to Gilead’s HEP C HOPE® mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name robohelp.com is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
Thus, we respectfully submit that Section 4(a)(i) of the Policy is satisfied, as the Domain Name is “identical or confusingly similar” to a trademark in which Complainant has rights.
b. Respondent Has No Rights or Legitimate Interests in the Domain Name
An examination of the facts surrounding Respondent’s registration and use of the Domain Name demonstrates that Respondent has no rights or legitimate interest in the Domain Name.
Respondent is not associated or affiliated with Gilead nor has Gilead granted any rights to Respondent to use the HEP C HOPE® trademark or the Domain Name. Further, it does not appear that Respondent is commonly known by the HEPATITIS HOPE mark. In fact, the small disclaimer found at the bottom of Respondent’s website specifically admits Registrant’s knowledge of Gilead and Gilead’s hepatitis c treatments (“We are not associated with nor affiliated or sponsored by Harvoni, Sovaldi, Olysio and Viekira Pak. These brand names are registered trademarks of their individual parent companies.”) This admission makes clear that Respondent was aware of Complainant and Complainant’s rights when it registered its domain. If, in fact, Respondent is in the market of providing information on treatment options for hepatitis c and assistance with obtaining prescriptions, then Respondent would also be clearly aware of Gilead’s well-known HEP C HOPE® informational services. Further, on information and belief, Respondent previously registered other domain names that included Gilead’s trademarks, such as <harvonihelp.com> (as discussed above). Respondent clearly registered the Domain Name in an attempt to trade off Gilead’s famous marks and worldwide success; it has no rights or legitimate interests in the Domain Name.
Respondent’s intent is further supported by its use of the HEPATITIS HOPE mark, which is clearly confusingly similar to the HEP C HOPE® mark, with the mere addition of the full spelling of the HEP abbreviation and the removal of the letter “C.” The HEPATITIS HOPE mark keeps the distinctive HOPE term and places it after the HEP-formative term to retain visual and phonetic similarity to Gilead’s HEP C HOPE® mark. It is evident that Respondent willfully adopted the “Hepatitis Hope” name and hepatitishope.com domain in an attempt to unfairly capitalize on the valuable goodwill Gilead has built in its mark and was clearly meant to entice interested consumers to enter the Domain Name under the pretense that they would be able to receive help from Gilead or its authorized partners associated with the HARVONI® and SOVALDI® products. Respondent’s full knowledge of Gilead’s rights and its infringement thereof are also readily apparent from its exploitation of the HARVONI® and SOVALDI® products on the content posted on the Domain Name.
By using a confusingly-similar domain name to direct visitors to its own purported services, Respondent is using Gilead’s trademark for its own commercial purposes. As noted above, the phone number that consumers would use to access Respondent’s services is inactive and has been inactive for months; there has been no way for consumers to access Respondent’s purported prescription services without first providing significant personal information. Respondent is, however, using the Domain Name that the consuming public is likely to associate with Complainant Gilead to drive traffic to its site and to collect data of consumers needing access to Gilead’s hepatitis c pharmaceuticals. Respondent’s diversionary use of the Domain Name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Domain Manager, FA 124755 (Forum Oct. 28, 2002) (ordering transfer of buy-celebrex-online-pain-relief-painkillers.com, finding that using a domain name to provide a search engine for individuals seeking to purchase pharmaceutical products online does not represent a bona fide offering of goods or services); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
The foregoing decisions are directly applicable to the present case. Similar to the above referenced facts, Respondent’s <hepatitishope.com> domain takes advantage of the goodwill associated with Gilead and its HEP C HOPE® mark. The above-referenced UDRP decisions also demonstrate that the commercial use of a confusingly similar domain name to divert Internet traffic and/or collect data does not give right to a legitimate use of the Domain Name. In fact, it does the opposite. Here, it offers no help, but instead prejudices hepatitis patients and leads to potential consumer confusion or, worse, public safety and health risks. Respondent’s use of the HEPATITIS HOPE mark is not in good faith and it has no legitimate interest in the Domain Name.
Respondent is not authorized or licensed by Gilead to use its HEP C HOPE® mark or any other trademarks. Despite that fact, Respondent registered the Domain Name and is using the corresponding website to offer alleged prescription assistance services. Respondent is also not authorized to use HEP C HOPE®, or the confusingly similar HEPATITIS HOPE mark, in the content of the website, as a trade name or trademark therein.
At the time of the filing of the Complaint, the Domain Name lists a privacy protection contact. Once the privacy protection was lifted, the registrant was identified as Vladimir Lenchitsky of Target Logix LLC. Pursuant to Policy ¶4(c)(ii), Respondent cannot provide evidence that Respondent is commonly known by the Domain Name or that it has any rights in Gilead’s trademark. See Broadcom Corp. v. Intellifone Corp., FA96356 (Forum Feb. 5, 2001) (holding that respondent has “no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate fair use”); see also Middle Atlantic Products, Inc. v. Domain Administrator c/o Whois IDentity Shield, FA 1081303 (Forum Oct. 5, 2007) (where respondent used a domain privacy service, holding that “nothing in the evidence before the Panel indicates that Respondent is commonly known by the domain name” at issue). In the instant case, Respondent cannot credibly argue that it is commonly known by the HEPATITIS HOPE Domain Name in its privacy protected status, its registrant name, or registrant organization name.
Respondent claims that is uses the mark to help under-insured consumers needing access to treatment; however, the evidence indicates that this is not accurate. Even if it were true, serving a population in need does not translate to “good faith” use of a third party’s trademark rights and goodwill. Respondent argues that its use of the HEPATITIS HOPE mark is a fair use because it offers “hope” to consumers. “Hope,” however, is not descriptive of its purported services. Respondent cannot rely on its claim that its use of “Hepatitis Hope” is merely descriptive, particularly when the experts at the U.S. PTO evaluated the nearly identical HEP C HOPE® mark and determined that the mark is not descriptive and warrants trademark protection from confusingly-similar marks. Respondent cannot simply overlook the fact that Gilead has a trademark registration on the principal register for the HEP C HOPE® mark and that Gilead’s HEP C HOPE® mark has become well-known in the community for the services listed in the trademark registration since its first use in February 2014. Respondent further fails to admit what appears to be the true intent: to adopt and use trademarks and domain names that are confusingly similar to Gilead’s well-known trademarks in order to make a false association with Gilead so that it can be more successful in directing consumers to its network of pharmacies and/or sell the collected information.
Given the foregoing, it is apparent that Respondent does not have legitimate interests in the Domain Name, as legitimate interests are defined in Sections 4(c)(i)-(iii) of the UDRP. As such, Complainant has satisfied the second element of its complaint under the Policy Section 4(a)(ii).
c. Respondent Registered and Is Using the Domain Name in Bad Faith
(i) Respondent is attempting to attract Internet users for commercial gain to its alleged prescription assistance services.
Respondent has registered a Domain Name which is confusingly similar to Complainant’s HEP C HOPE® mark for the purpose of offering alleged prescription assistance services relating to Complainant’s HARVONI® and SOVALDI® products. Policy paragraph 4(b)(iv) states that the following shall be evidence of registration and use of a domain in bad faith:
by using the domain name, the Registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Respondent’s decision to register the Domain Name <hepatitishope.com>, which is confusingly similar to Gilead’s HEP C HOPE® trademark, to offer purported assistance with Gilead’s pharmaceutical products is not mere happenstance. Given Gilead’s well-known role in developing treatments for hepatitis c, and Respondent’s admitted knowledge thereof, Respondent inevitably registered the Domain Name with actual knowledge of Gilead’s trademarks and its rights, and therefore bad faith intent.
Respondent has been using Gilead’s trademarks with the intention of attracting to Respondent’s website Internet users who expect to find a website operated or authorized by Gilead. Respondent registered and uses the Domain Name to create confusion with Gilead’s trademarks, for the purpose of deriving commercial gain in the form of directing visitors to Respondent’s purported prescription assistance services. These facts fall squarely within paragraph 4(b)(iv) of the Policy establishing bad faith registration and use of the disputed domain name. See State Fair of Texas v. Granbury.com, FA 95288 (Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name bigtex.net to infringe on complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking complainant’s website to its own website for commercial gain).
Respondent’s intentions can also be gleaned from the suggestive domain, “hepatitishope,” as it implies that Respondent is able to offer “hope” to patients with “hepatitis.” Nevertheless, despite numerous attempts to contact Respondent to obtain assistance, Respondent has never been reachable. Respondent’s activities constitute bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is benefiting from the unauthorized use and goodwill of Gilead’s mark. See G.D. Searle & Co. v. Duece Strategies, FA 210000126827 (Forum Nov. 26, 2002) (ordering transfer of celebrex-online- pharmacy.com, finding that the text of the second top level domain itself is evidence of bad faith registration and use); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with complainant and its products that the use of the domain names by Respondent, who has no connection with complainant, suggests opportunistic bad faith).
Respondent’s website contains what appears to be a small disclaimer of Gilead’s HARVONI® and SOVALDI® marks that is located in very small typeface at the bottom of the website; however, this disclaimer is insufficient to alleviate infringement and does not include Gilead’s HEP C HOPE® mark, which is the mark at issue in the Domain Name. Disclaimers are routinely held to be legally insufficient and in no way automatically preclude liability. See AltaVista Company v. Altavisa, FA 8000095480 (Forum Oct. 31, 2015) (ordering transfer of altavista.com, finding that even “a ‘disclaimer’ at the top of the home page . . . is inadequate to dispel the substantial likelihood of confusion between Respondent’s domain name and Complainant’s mark(s).”). Notably, “the domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the ‘disclaimer.’ The ‘disclaimer’ would only be seen by a consumer after he/she has already potentially been confused and exposed to the offers of Respondent for sale of goods.” It is clear that Respondent is attempting to trade off of the HEP C HOPE® mark by using a confusingly similar mark in its domain name and on its website, drawing consumers to the website on false pretenses and creating initial interest confusion as well as confusion as to whether Gilead operates or is affiliated with Respondent’s website.
Finally, Gilead already provides prescription assistance to patients wishing to obtain HARVONI® and SOVALDI® products free-of-charge through its SUPPORT PATH program. Presumably, Respondent is charging consumers for its goods and/or services and charging patients for services and products that they could otherwise receive for free is an unscrupulous business model. Doing it under the HEPATITIS HOPE name, which is confusingly similar to Gilead’s HEP C HOPE® name, will cause immeasurable damage to Gilead, which is a well-respected, global company that provides easily-accessible and thorough information and treatment to millions of consumers each year through its highly-effective pharmaceutical products and its competent and informative HEP C HOPE® program.
Accordingly, Respondent has registered and used the Domain Name in bad faith.
(ii) Respondent’s knowledge of Gilead, its competing services, and its registered trademarks is evidence of bad faith.
At the time Respondent registered the Domain Name, Gilead owned a trademark for the HEP C HOPE® mark and had already been using this mark since at least as early as February 2014. Respondent was clearly aware of Gilead and its fame with hepatitis c treatment when Respondent registered the Domain Name, as it mentions Gilead and Gilead’s famous hepatitis c pharmaceuticals on its website. Furthermore, Gilead’s trademark application for the HEP C HOPE® mark also gave Respondent constructive notice of Gilead’s trademark rights. “Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).” Hugh Jackman v. Peter Sun, FA 248716 (Forum May 10, 2004); see also Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (“There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); Victoria’s Secret v. Sherry Hardin, FA 96694 (Forum Mar. 31, 2001) (“Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith.”); 15 U.S.C. § 1072; Eastman Kodak Co. v. Dionne Lamb, FA 97644 (Forum July 17, 2001) (“Registering a domain name that the registrant knows belongs to someone else and that the registrant knows will confuse the users about the source or sponsorship of the domain name is bad faith.”).
Gilead also provided Respondent with actual knowledge of its prior rights in the HEP C HOPE® mark, when it contacted Respondent on March 16, 2016 at the e-mail address listed on its Whois. Respondent responded two weeks later and the parties communicated a few times over the following few weeks. Despite Respondent’s constructive and actual knowledge of Complainant’s rights and Complainant’s concerns about a likelihood of confusion, Respondent refused to cease use of the Domain Name.
(iii) On Information and Belief, Respondent Has Engaged in a Pattern of Registering Domain Names Containing Gilead’s Marks
In corresponding with Respondent, Complainant learned that Respondent is the PPAN, a corporation registered in California. Complainant further learned that PPAN operates or is affiliated with a chain of pharmacies, which seemingly sell Gilead’s HARVONI® and SOVALDI® pharmaceuticals. As noted above, on information and belief, PPAN and/or its affiliates is also behind the <harvonihelp.com> domain that was transferred to Gilead in a UDRP proceeding last Fall. Respondent’s bad faith registration, coupled with its emerging pattern of registering domains that include Gilead’s trademarks, exacerbates its liability for acting in bad faith.
Even if all of the prior evidence has not clearly shown the bad faith intent, registering multiple domain names containing the trademarks of others, particularly the same trademark holder, constitutes bad faith registration and use. See Big Dog Holdings, Inc. v. Frank Day, FA 93554 (Forum Mar. 9, 2000) (finding bad faith because “Respondents have a pattern of registering multiple domain names which are the registered trademarks of others.); FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (Forum Mar. 26, 2003) (“Respondent is the holder of several domain names that violate the intellectual property rights of famous third parties. Respondent’s pattern of registering infringing domain names… constitutes bad faith pursuant to Policy ¶ 4(b)(ii).”); Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO D2000-56 (WIPO Mar. 27, 2000) (finding that that Respondent’s failure to use the three domains or to allege a good faith basis for use of them is sufficient basis for the inference to be drawn that a pattern of conduct exists).
Further, bad faith is exhibited by the fact that the contact phone number on both websites has not been accessible to consumers. Registrant cannot use these domains in good faith to provide assistance to consumers needing information if consumers cannot even get through to the help lines.
For all of the foregoing reasons, Respondent is using the Domain Name in bad faith, as defined under Section 4(b)(iv) of the UDRP. Complainant has therefore satisfied the third and final element of its complaint under the UDRP, Section 4(a)(iii), requiring Respondent to transfer the Domain Name to Complainant.
B. Respondent
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i).
Respondent, Pharmacy Patient Advocacy Network (“PPAN” or “Respondent”), is a nonprofit California corporation that has operated as a nonprofit corporation in the state of California since November 20, 2014 and began its operations as early as May 2014. The organization was founded by professionals in the healthcare and legal field who saw the need for patient programs and education geared towards assisting underprivileged persons in their pursuit of quality healthcare through education on their disease state, workplace wellness, improved quality of living, and access to quality medications to underinsured/ uninsured patients. PPAN is also a member of National Quality Forum (NQF), an organization geared towards helping the population achieve better and more affordable care while promoting better quality of healthcare.
PPAN thrives to participate and sponsor in a number of community events such as Breast Cancer Run/Walk, Children’s Music Fund (to benefit children with disabilities), and American Liver Society, among others. PPAN also maintains a website located at: http://pharmacypatientadvocacynetwork.org/, as well as Facebook® page at: https://www.facebook.com/PharmacyPatientAdvocacyNetwork/?fref=ts. Through the work with the American Liver Society and the Board of Directors, PPAN saw the need within the community for access to often expensive Hepatitis medications. Even though there are opportunities for a cure with the new medications available in the market place, the access to those medications is limited due to exorbitant cost and challenging access for a large portion of the population in need of those medications.
Through working with the medical community, PPAN, among other things, works with various programs offered to patients with Hepatitis to help Hepatitis patients with needs. The website located at http://www.heptitishope.com is geared toward those patients with Hepatitis seeking assistance in obtaining affordable medications, education, and insurance assistance. PPAN assists such patients that contact the PPAN through the website with a variety of Hepatitis related needs, such as directing them to the providers available in their area, assisting the patients in obtaining insurance benefits, educating them on the process of qualifying for the medication, directing the patients and educating them on the programs available to them (such as Gilead Support Path, among others), as well educating the patients about the disease.
Complainant, Gilead Sciences, Inc. (“Gilead” or “Complainant”), admittedly a pharmaceutical industry giant, wrongfully alleges, as detailed in this Response, that PPAN, a nonprofit organization, has no legitimate interest in the Domain Name (<hepatitishope.com>) and registered and is using the Domain Name in bad faith when PPAN provides through the Domain Name “Hepatitis prescription assistance program” (among other things) and offers help to non-insured or underinsured Hepatitis patients afflicted with Hepatitis and their families to receive the proper medical and treatment assistance. Gilead also alleges that the Domain Name that incorporates two descriptive and widely used (often together) terms, “hepatitis” and “hope,” is confusingly similar to its generic and descriptive mark HEP C HOPE. See Complaint at p. 8.
To support its purported assertions, Complainant submits no analysis of likelihood of confusion, and merely contends that its claimed trademark and the Domain Name are confusingly similar simply based on the assertion that part of its trademark “HEP C,” which is coupled with generic word “hope,” is a common abbreviation of the word “hepatitis C.” It is telling that Complainant knowingly ignores the crowdedness of the field that restricts the protection awarded to Complainant’s trademark, as well as the fact that Complainant’s mark contains an abbreviation of only a single type of Hepatitis (Hepatitis C), and does not relate to other forms of Hepatitis (e.g. Hepatitis A and B) that are covered by Respondent’s Domain Name. See, e.g., PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563 (Forum July 19, 2013) (trademark must be easily recognizable within the domain name, and a higher degree of similarity may be required where the mark exists within a crowded field.)
Similarly, Gilead provides no evidence to support its allegations that Respondent registered and is using the Domain Name in bad faith. Complainant relies on self-serving suspicions and unsubstantiated information to prove that Respondent’s services are inactive. For example, Respondent’s counsel purports that Respondent’s services are inactive in light of four failed attempts to reach Respondent undertaken in a period of three months. See Formula One Licensing BV v. Formula One Internet, WIPO/D2000-0193 (Complainant is required to substantiate its Complaint in order to sufficiently make out a case. If in the light of the statements and documents presented doubts remain, the Complaint cannot be allowed.). Yet, more than thousand Hepatitis patients have reached Respondent by phone and more than two thousand by e-mail and through the website during the same period of time.
Complainant further purports a self-serving conspiracy theory alleging that respondent engages in a pattern of bad faith domain registration. Complainant alleges that Respondent is behind a bad faith registration of <harvonihelp.com> domain that was transferred to Gilead last fall.
It is telling that Gilead fails to inform the Forum that while the <harvonihelp.com> domain was transferred to Gilead, there has been no finding of bad faith or that the transferee had no legitimate interest in connection with the <harvonihelp.com> domain. See Gilead Sciences, Inc. v. Murad Muradyan / Master Diamant Inc., FA1507001631217 (Forum Aug 31, 2015). Moreover, the registration of a single domain name does not amount to “a pattern” of behavior as wrongfully suggested by Complainant. See, e.g., Interiors & Gifts, Inc. v. Home Interiors, WIPO/D2000-0010 (The Panel held that the registration of two domain names does not rise to the level of a pattern of conduct); Harvey Norman Retailing Pty Ltd v Oxford-University, WIPO/D2000-0944 (The Panel found a pattern after taking into account that Respondent registered a third domain name that was subject of another UDRP proceeding (emphasis added)).
As further detailed herein, Respondent submits that Gilead failed to satisfy its burden of proof. See, e.g., Vanguard Medica Limited v. Theo McCormick, WIPO/D2000-0067 (The burden of proof is not satisfied by a mere showing of suspicion); Capt’n Snooze Management Pty. Ltd. Domains 4 Sale, WIPO/D2000-0488 (Assertions that any use of the Domain Name by another party would likely mislead or deceive Complainant’s customers, without evidence, is not of much use.); Document Technologies, Inc. v. International Electronic Communications Inc., WIPO/D2000-0270 (Proceedings not conducive to credibility determinations given the lack of discovery and live testimony); Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO/D2000-0950 (Proceeding not the appropriate forum for resolving disputed issues as to fact or motive where there is room for reasonable doubt, except by resolving the doubt against the Party bearing the burden of proof).
Hence, Respondent respectfully requests that the Complaint be dismissed with prejudice.
• The Disputed Domain Name is Not Confusingly Similar to Complainant’s Mark That is Afforded Limited, If Any, Protections
Contrary to allegations of confusing similarity between the HEP C HOPE mark and the Disputed Domain, Complainant failed to prove by a preponderance of evidence that its mark is “identical” or “confusingly similar” to the Domain Name.
The services provided under Gilead’s trademark are not the same as the services offered under the Domain Name. Gilead’s HEP C HOPE mark is registered in connection with “Promoting public awareness of treatment for Hepatitis C.” In other words, HEP C HOPE mark is generally used in connection with promoting Gilead’s own pharmaceutical treatments for Hepatitis C, e.g., HARVONI and related services. Upon information and belief, Complainant does not offer any services under the mark HEP C HOPE that relate to other types of Hepatitis.
On the other hand, the Domain Name is used in connection with offering help (and hope) to non-insured or underinsured Hepatitis patients and their families to receive the proper medical and treatment assistance. The services provided under the Domain Name are much greater in scope. In other words, when HEP C HOPE is used in connection with treatment for Hepatitis C, the Domain Name offers help to all patients suffering from any type or form of Hepatitis.
Further, the HEP C HOPE mark, when compared with the use of the term “HepatitisHope,” in its entirety as to appearance, sound, connotation and commercial impression, is distinct from the HEP C HOPE mark, and no likelihood of confusion among the consumers can exist (and, to Respondent’s knowledge, exists) as to the source, sponsorship, or affiliation. The HEP C HOPE mark contains unique elements (i.e. “HEP” and “C”). The Domain Name does not contain letter “c” as it is not directed to serving Hepatitis C patients, but rather more generally the entire Hepatitis population. This, in itself, is sufficient to take the marks out of the realm of being confusingly similar. See In re Professional Wrestling Hall of Fame, 2004 WL 2368424 (2004) (The Board did not find likelihood of confusion between the two marks, both including words “Professional Wrestling Hall of Fame.” The Board determined that although both marks shared wording “Professional Wrestling Hall of Fame,” second mark contained an additional abbreviation PWHF.)
Further, while a domain name containing an abbreviated form of a mark may be confusingly similar to the mark, the mark must be easily recognizable within the domain name, and a higher degree of similarity may be required where the mark exists within a crowded field. See PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563, supra (Forum July 19, 2013).
Here, clearly HEP C is an abbreviation for Hepatitis C, however the Domain Name does not reference specifically Hepatitis C, but rather relates to a general disease of Hepatitis, irrespective of the type. The fact that the website corresponding to the Domain Name refers in some instances to Hepatitis C does not change the forgoing distinction. Confusing similarity is to be determined by reference only to the disputed domain name and the mark in which Complainant claims rights. The manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563 (Forum July 19, 2013); Transamerica Corp. v. One Trans-America Corp., FA 1250996 (Forum Apr. 29, 2009) (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2 (2d ed. 2011, http://www.wipo.int/amc/en/domains/search/overview/).
Moreover, Gilead is not the exclusive user of the terms “hep c” and “hope.” There are numerous instances where the term “hep c” and “hope” are used together. A Google® search using the terms “hep C” and “hope” returns numerous links, which are not associated with the Complainant or Respondent, and that use these two terms together. For example, Facebook page titled “Hope for Hep C” (https://www.facebook.com/hopeforhepc) and the University of North Carolina Division of Gastroenterology and Hepatology Liver Center’s own web page titled “Hep-C hope” (https://www.med.unc.edu/gi/specialties/liver/education/hepatitis-c/hep-c-hope). See Respondent.
The crowdedness of the field indicates an increased sensitivity on the part of the public to small differences in marks and services, which causes a narrowing of the protection afforded to such marks. See 1 J. McCarthy, Trademark and Unfair Competition § 11:26, at 511. Here, the dissimilarity between Complainant’s mark and the Domain Name, and the commonality of use of the words “hep c” and “hope” clearly indicate that there is no likelihood of confusion or confusing similarity between Complainant’s mark and the Domain Name.
While Complainant’s mark is registered with the U.S. Patent and Trademark Office, the descriptiveness of the mark and crowdedness of the field result in the very narrow protection of the mark. And even if Complainant is given the broadest possible protection for its mark that also includes the words combination Hepatitis C (non-abbreviated word) and Hope, there is no likelihood of confusion because the Domain Name combines with the word “hope,” the word “hepatitis,” which describes all types of Hepatitis, rather than only Hepatitis C.
Gilead simply cannot monopolize commonly used terms such as “hep c” and “hope.” There are numerous potential claimants who could claim rights to this particular domain name. To allow Complainant to take this Domain Name from an existing registrant is to give a single company rights to a common English word in potentially all domains without any proof of the strength of its mark, and without any showing of confusion. Such broad global protection for a trademark registration of unproven strength would constitute extending trademark rights to an unprecedented extent without any showing of harm. In other words, heeding to Gilead’s argument would mean that no one in the pharmaceutical or any other industry (including nonprofit organizations), who works or provides services to Hepatitis patients, would be permitted to use the very words that can exclusively describe the function, industry and purpose of providing hope of a cure to Hep C (or other types of Hepatitis).
In light of the above analysis, Respondent submits that the disputed Domain Name is not confusingly similar to Complainant’s mark.
• Respondent has Rights or Legitimate Interest in Respect of the Domain Name
Complainant asserts without providing any reasonable evidence that Respondent has no rights or legitimate interest with regard to the Domain Name, <hepatitishope.com>. The Complainant relies on the restatement of already argued and unpersuasive similarities between the Domain Name and its trademark, and self-serving suspicions and unsubstantiated theories that the services provided in connection with the Domain Name are not those that are in plain sight of every user visiting the website associated with the Domain Name.
The Policy and Rules are clear that the initial burden, though light, still rests “squarely on the shoulders of Complainant to show that Respondent has no rights or legitimate interest in respect of the domain name. Once Complainant has at least demonstrated enough indication, then, but only then does the burden shift to Respondent’s shoulders to rebut or explain.” Stream International Inc. v. dotPartners LLC, FA0112428 (Forum May 2, 2002) (decision under STOP); see also The Wharton School of the University of Pennsylvania v. Motherboards.com, FA0161274 (Forum June 13, 2003) (A mere allegation of the lack of rights or interests of the Respondent is not enough under the scope of the Policy to find a Complaint successful.).
Even though Complainant has failed to carry its burden of proof, Respondent nevertheless presents the following to demonstrate that it has rights or legitimate interests in the Domain Name.
PPAN established Hepatitis Hope as d/b/a in 2015, and has been providing nonprofit services continuously ever since. The website associated with the Domain Name, included the “Hepatitis Hope” term prominently, and thus many Hepatitis patients visiting the website have learned to know and rely on the website for help. Respondent has been “known by” the Domain Name as the Domain Name is identical to the services it represents. Hence, Respondent clearly has rights and legitimate interest in the Domain Name, <hepatitishope.com>.
Like in the instant case, panels previously have found rights or legitimate interests in a domain name where the domain name was a generic or descriptive term. See Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, Case No. D2000-0161 (“As far as paragraph 4(a)(ii) and (iii) of the Policy are concerned, the Panel concludes that the Respondent did have a legitimate interest in respect of the domain name and his registration was not effected in bad faith. The word ‘zero’ is a common English word. Although any number of organizations (including the Complainant) may have trade mark rights in such a word (and indeed the Respondent has produced evidence of numerous US trade marks which include or comprise the word ‘zero’”.); see, e.g., NAF/FA93682 (cartoys.com).
Another decision by the Forum that is right on point, similarly deals with a generic and descriptive mark SUMMERTECH. See SummerTech Inc. v. Jimmy Hill / iD Tech Camp, FA1512001652542 (Forum February 4, 2016). Respondent in that case contended that it registered and is using the disputed domain names, <summertechcamp.com> and <summertechcamp.net>, for their plain meanings, namely, to furnish technology training to students at summer camps. Respondent argued and presented arguments that Complainant’s business is relatively localized and far away from Respondent’s base. After considering the parties argument, Panel found for the respondent in that matter.
Here, as detailed in the subsection (“a”), Complainant’s trademark is an admittedly known abbreviation of the commonly known illness Hepatitis C. The descriptiveness of this term is only emphasized by yet another common English word “hope.” The descriptiveness of the mark and crowdedness of the field, as set forth above, has resulted in the very narrow protection of Complainant’s mark. Even if Complainant is given the broadest possible protection for its mark, the Domain Name is in fact the combination of the words “hope” and “hepatitis,” the words that describe all types of Hepatitis, rather than only Hepatitis C. Clearly, Respondent has legitimate interests in the Domain Name associated with the website that provides assistance to non-insured or underinsured Hepatitis (as well as Hepatitis C) patients and their families to receive the proper medical and treatment assistance.
Complainant’s unsubstantiated statements that the Respondent’s services are inactive are blatantly not true. Complainant states that “the phone number that consumers would use to access Respondent’s services is inactive and has been inactive for months.” Complainant’s counsels’ declarations, however, provide that they made a total of four attempts to reach Respondent by phone in a period of three months.
To the contrary, Respondent has assisted thousands of patients that come to the website associated with the Domain Name to seek help. Thousands of patients have been able to reach Respondent by phone, e-mail and website in the same time period as described by Complainant’s counsels’ declarations, yet Complainant’s counsels seem to be having drop calls issues, a problem that can only be interpreted as associated with counsels’ own telephone lines. Complainant is simply unable to substantiate its purported allegations that Respondent’s services are inactive.
Moreover, PPAN provides its services through the website without any cost to the patients. Such use of the Domain Name is “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” that is supported by the Policy. See Marathon Tours, Inc. v. Steve Hibbs / The Official 7 Continents Marathon Club / The Official 7 Continents Marathon, 1/2 Marathon & Ultra Marathon Club, Inc., Case No. D2014-0603 (The Respondent has a prima facie legitimate interest in using relevant, descriptive terms for its Domain Name associated with the descriptive meaning of those terms. The Complainant has not established that the Domain Name was more likely selected to exploit the value of the Complainant’s claimed mark.)(emphasis added).
Complainant further alleges that the references to its products on the website associated with the Domain Name suggest that Respondent has no rights in the Domain Name. Respondent disagrees as this assertion is not supported by the law. Due to the nature of Respondent’s services, Respondent provides information with respect to various options and medications available for the patients having various types of Hepatitis seeking help when they visit the website, including those that are manufactured by Complainant. Such use of trademarks, when the trademarks are used to refer to trademark owners’ products or services, has been recognized by courts as “nominative,” non-infringing use . See Tiffany (NJ) Inc. v. eBay Inc. 600 F.3d 93 (2nd Cir. 2010); see also Energizer Brands, LLC v. Paradise Products / Paradise Products Inc., FA1512001652913 (In some cases, that the presence of competing hyperlinks on the resolving webpage of a respondent’s disputed domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶4(c)(i)); INVESTools Inc v. KingWeb Inc., FA 598845 (Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i)).
In light of the above, Respondent submits that it has rights or legitimate interests in respect to the Domain Name.
• Respondent did not Register and is Using the Domain Name in Bad Faith
Complainant has failed to meet its burden of proof that the Domain Name was registered and is being used in bad faith under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide,Inc. v. Samjo CellTech. Ltd., FA0406512 (Forum Mar. 9, 2005) (mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA0133676 (Forum Jan. 16, 2003) (general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). In an effort to prove the “bad faith” prong of the Policy, Complainant once again relies on unsupported allegations and restatements of already presented failed theories regarding Respondent’s legitimacy and unpersuasive similarities between the Domain Name and Complainant’s trademark.
Contrary to Complainant’s purported allegations that Respondent is using the Domain Name in bad faith, Respondent has registered and is using the Domain Name in connection with the website that provides non-insured or underinsured patients with Hepatitis information and their families with services related to receiving the proper medical and treatment assistance. Complainant conveniently ignores the glaring fact that the Domain Name encompasses all types of Hepatitis, and specifically describes the services it in fact provides, namely nonprofit services for non-insured or underinsured patients. Indeed, Respondent offers help and “hope” to the patients in need, afflicted with Hepatitis. On the other hand, Gilead uses its trademark in connection with providing “education material” about Hepatitis C and offering pharmaceutical solutions based on Gilead’s own line of products relating to Hepatitis C.
With respect to Gilead’s allegations that users visiting Respondent’s website are looking for Gilead’s own website, Gilead provides no evidence whatsoever that any Internet user has confused the two websites. In fact, based on the legal analysis presented in the above sections, it is absolutely clear that no likelihood of confusion exists. There is also no evidence presented by Complainant of instances of confusion. Respondent similarly is not aware of any instances of confusion. This underscores the generic and descriptive nature of Gilead’s mark, lack of confusing similarity between the Domain Name and Gilead’s mark, and the increased sensitivity on the part of the public to the differences between the mark and the Domain Name in the overcrowded field, which in turn causes a narrowing of the protection afforded to Gilead’s mark.
Gilead further alleges that Respondent was not reachable “despite numerous attempts to contact Respondent to obtain assistance.” Complainant’s counsels’ declarations provide that counsels undertook four in total attempts to reach Respondent by phone from March 15 to June 8. Yet, unsurprisingly, one thousand one hundred ninety nine patients have reached Respondent via the telephone provided on the website during the same period of time. Additionally, Respondent received over two thousand inquiries via e-mail and website information request forms. Accordingly, the weight of the evidence shows that Respondent’s website is fully functional, and numerous Hepatitis patents have been able to reach Respondent and receive services.
Complainant further suggests that because Gilead maintains a program where it allegedly provides “free-of-charge” Gilead products, Respondent’s offering help to uninsured or underinsured patients (only portion of who are afflicted with Hepatitis C) causes Gilead “immeasurable damage.” Gilead fails to provide any evidence of damage or put forth a reasonable legal theory relating to damages. Yet again, Gilead conveniently “presumes” the fact that Respondent charges for the services it provides through the Domain Name. Indeed, as set forth above, Respondent is the nonprofit organization that does not charge the users of the website corresponding to the Domain Name.
Moreover, Respondent does not compete with Gilead, a pharmaceuticals manufacturer and developer. PPAN is a nonprofit organization geared to help Hepatitis patients to obtain help they deserve at the time of hardship. To that end, PPAN has registered and is using the Domain Name.
Contrary to Gilead’s allegations, while Respondent had knowledge of Gilead’s other trademarks (e.g., HARVONI and SOVALDI), it had no actual knowledge of Hep C Help registration. Complainant fails to establish that Respondent had actual knowledge of the trademark at the time it acquired the domain name. The “mere existence of Complainant’s trademark rights at the time Respondent registered the disputed domain name does not … create any presumption of knowledge.” See Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). Asserting knowledge does not prove it. See Save the Children Federation, Inc. v. Proservices, D2011-0615 (WIPO May 19, 2011).
The descriptive nature of the words included in the Gilead’s trademark registration, coupled with lack of substantial similarity between the Domain Name and Hep C Help mark, underscore that Respondent had no knowledge of Complainant’s trademark and did not register the Domain Name in bad faith. The words combination “hepatitis help” (which encompass the Doman Name) exclusively describes the nature of Respondent’s website, namely, providing hope for patients with Hepatitis who cannot afford high prices of prescription drugs manufactured by pharmaceutical industry giants, including those of Complainant.
With respect to the allegation that Respondent has engaged in a pattern of registering domains containing Complainant’s marks, Complainant’s claims similarly have no merit. Complainant fails to provide evidence that shows a pattern of bad faith registrations of domain names designed to prevent Gilead from reflecting its mark in a domain name or primarily for the purpose of disrupting the business of a competitor, as required under Policy, paragraphs 4b(ii) and 4(b)(iii), respectively.
Complainant exclusively relies on a single instance of registration of the <harvonihelp.com> domain. Complainant provides no evidence that this was a “bad faith” registration or that Respondent is Complainant’s competitor.
Complainant further fails to cite to any cases where registering a single domain name would amount to “a pattern” of behavior. In fact, numerous cases resolved under the Policy have provided that no pattern of conduct is found based on the registration of only two domain names (one being a domain name in dispute). See, e.g., Interiors & Gifts, Inc. v. Home Interiors, WIPO/D2000-0010 (The Panel held that the registration of two domain names does not rise to the level of a pattern of conduct); Harvey Norman Retailing Pty Ltd v Oxford-University, WIPO/D2000-0944 (The Panel found a pattern after taking into account that Respondent registered a third domain name that was subject of another UDRP proceeding (emphasis added)); Ingersoll-rand.net, ingersoll-rand.org, and ingersollrand.org, WIPO/D2000-0021 (No pattern of conduct found after registration of three identical or confusingly similar domain names); Time Inc. v. Chip Cooper, WIPO/D2000-1342 (No pattern of conduct based on the registration of 4 domain names where 3 domain names (lifemagazine.com, lifemagazine.net, lifemagazine.org - all at issue) were confusingly similar or identical to a registered trademark and 1 other domain (shinola.com) was not at issue).
Furthermore, Complainant when relying on the <harvonihelp.com> domain transfer for its purported “pattern” theory fails to notify the Forum that while the <harvonihelp.com> domain was transferred to Gilead, there has been no finding of bad faith with respect to registration and use of the <harvonihelp.com> domain. See Gilead Sciences, Inc. v. Murad Muradyan / Master Diamant Inc., FA1507001631217 (Forum Aug 31, 2015). The respondent in that matter has not contested the transfer of the disputed domain name, but instead agreed to transfer the domain name to Complainant voluntarily as soon as it learned about Gilead’s interest in the domain. In fact, the respondent submitted the following statement “It was a pleasure speaking to you today, as I mentioned this domain have been purchased for my clients and I couldn't even imagine it will create so many problems! Please let me know what should I do to fix this situation, I'm ready to transfer domain to harvoni or just release it from my account. Thank you, and sorry for inconvenience.” Accordingly, even taking the facts in the light most favorable to Complainant, the <harvonihelp.com> domain’s immediate transfer to Gilead and no finding of bad faith by the Forum, clearly support the conclusion that Respondent has not been engaging in a pattern of bad faith domain registrations in order to prevent Gilead from reflecting the mark in a domain name or primarily for the purpose of disrupting the business of a competitor.
In addition, the ICANN Uniform Domain Name Dispute Resolution Policy defines elements indicative of bad faith. None of these elements apply to Respondent’s conduct. Respondent has not acquired the domain name primarily for the purpose of selling the Domain Name registration to the Complainant. Respondent has never directly solicited the Complainant to purchase the Domain Name. It also has not registered the name in order to prevent Gilead from reflecting the mark in the corresponding domain name. Complainant in fact has a domain registration, hepchope.com, corresponding to the mark it is actually using. Respondent denies the name was registered to disrupt the business of a competitor. Complainant and Respondent are not competitors. Finally, Respondent has no intention to attract or confuse those looking for Complainant, nor is there an attempt to imply any affiliation or endorsement of Respondent by Complainant as set forth above.
For the forgoing reasons, Respondent submits that Complainant failed to meet its burden of proof. Specifically, Complainant failed to show that there are substantial similarities or likelihood of confusion between the Domain Name and its generic and descriptive mark, or that Respondent has no legitimate use of the Domain Name that exclusively describes its services, or that Respondent registered and is using the Domain Name in bad faith.
While Complainant failed to satisfy its burden, Respondent nevertheless presented sufficient evidence to retain registration and use of the disputed Domain Name. Accordingly, Respondent submits that the Panel must deny Complainant’s request to transfer the Domain Name.
C. Additional Submissions
Complainant submitted an additional response, which read:
a. Respondent Is in Default for Not Responding to the Complaint.
On June 8, 2016, Complainant filed its UDRP complaint ("Initial Complaint ") against WHOIS GUARD PROTECTED, the listed registrant of the hepatitishvpe.com domain ("Domain Name''). However, as a result of the Initial Complaint , the Whois protection was lifted, and on June 9, 2016, the FORUM informed Complainant that VLADIMIR LENCHITSKY I TARGET LOGIX LLC (''Respondent ") was the correct respondent. Accordingly, on June 13, 2016, Complainant filed its amended complaint ("Amended Complaint") with VLADIMIR LENCHITSKY I TARGET LOGIX LLC as Respondent. Collectively , the Initial Complaint and Amended Complaint are hereinafter referred to as the "Complaint."
Respondent's response was due within 20 days, or by July 5, 2016. On July 1, 2016, Complainant received a response ("Response ") to its Complaint; however, the Response was from Pharmacy Patient Advocacy Network ("PPAN ") and not the Respondent. The Response stated "This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for Respondent to retain registration and use of the disputed domain name. Respondent Pharmacy Patient Advocacy Network ("PPAN" or "Respondent") ..." However, PPAN is not, and never was, the Respondent.
Pursuant to Paragraph 1 of the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules), "Respondent means the holder of a domain-name registration against which a Complaint is initiated." Here, Respondent is VLADIMIR LENCHITSK Y I TARGET LOGIX LLC. Respondent VLADIMIR LENCHITSK Y I TARGET LOGIX LLC has not responded to the Complaint. As such, the Response is deficient and Respondent is in default.
Further, Respondent has not rebutted Complainant's allegations that (1) the <hepatitishope.com> domain is confusingly similar to the HEP C HOPE® trademark and <hepchope.com> domain, (2) Respondent is not known by the Domain Name and has no bona fide offering of goods or services in connection with the Domain Name, and (3) Respondent registered the Domain Name in bad faith to attract Gilead 's consumers to its site for its own commercial gain and had done so previously with the <harvonihelp.com> domain. Pursuant to Paragraph 10(d) of the UDRP Rules, "the Panel shall determine the admissibility , relevance, materiality and weight of the evidence." Further, the Panel in the Wharton School, a case cited by PPAN, found that "statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties ." Here, the only evidence submitted in the deficient Response was a signed declaration by PPAN; Respondent submitted no evidence. Further, absent Respondent's Response, the Panel should give strong weight to Complainant's evidence and allegations and transfer the Domain Name. See The Wharton School of the Univ. of Penn. v. Motherboards.com , FA0161274 (Forum June 13, 2003) (finding that "statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties") .
b. Even if Respondent Properly Joined PPAN, It Would Only Bolster the Evidence of Respondent's Bad Faith.
The UDRP Rules, Supp. Rules, and UDRP Policy do not detail the mechanism for a third party to respond to a Complaint in lieu of the respondent. However, even if the Panel used its discretion to consider allowing joinder of an additional party as respondent, it should minimally require evidence that the registrant of the domain name (a) is an authorized representative of the additional party or (b) managed or controlled the domain name on behalf of the additional party . Here, there was no evidence presented that Target Logix LLC and Vladimir Lenchitsky are the authorized representatives of PPAN or that Target Logix LLC and Vladimir Lenchitsky controlled or managed the Domain Name on behalf of PPAN. There was simply no explanation put forth as to why PPAN responded to Gilead 's Complaint against Vladimir Lenchitsky I Target Logix LLC. One can only conclude that PPAN responded to Gilead's Complaint to try disguise Respondent's clear commercial interest and bad faith in registering and using the Domain Name by falsely painting this case as the big pharmaceutical company coming after the good-doing non-profit.
Target Logix, LLC, the organization claimed as the registrant of the Domain Name, does not exist. Target Logix, LLC could not be found in a search of business records with the California Secretary of State; Dun & Bradstreet, Inc.; or Hoovers. Complainant did find the entity, Target Logic, Inc. The address on record for the entity docs not match the registration information on the Whois report. Providing inaccurate information on the Whois directory is an explicit violation of ICANN policies.
In fact, even if PPAN were able to supplement its Response to sufficiently define an authorized representative relationship between PPAN and Target Logix LLC ("Target Logix"), it would merely bolster Complainant's allegations that Target Logix and PPAN are working together to defraud consumers into turning over their personally-identifying and health information for Respondent to sell, and doing so by trading on Complainant Gilead's goodwill. This scheme between PPAN and Target Logix is further evidenced by a review of the DNS history of the Domain Name and the <targetlogix.com> domain, both of which have resided at the same IP address, identified as 192.99.167.211.
As identified on its website, Target Logix's business model is "to find and acquire enormous volumes of in-market potential customers" on a "cost per action basis" and to sell them as "leads for doctors." Target Logix further claims to "help[] grow your business by sourcing new, quality customers through more online channels than you can reach on your own." On its website, Target Logix is admittedly performing the activities Complainant suspected Respondent of performing in its Complaint.
The named registrant, Vladimir Lenchitsky is President, Principal, and/or CEO of at least three (3) pharmaceutical companies that collectively reported sales in excess of approximately $3 million dollars last year. The Medico Rx Specialty Pharmacy admittedly sells a limited variety of pharmaceuticals, which include hepatitis c medication. Given Respondent's commercial interests in acquiring the identities of hepatitis c consumers to sell leads to physicians and to push the sales of pharmaceuticals through its own line of pharmacies, Respondent cannot claim in good faith that it registered the Domain Name and uses the Domain Name to exclusively offer free services to an underserved community. Further, it cannot claim in good faith that its need to use the word HOPE in order to reach this community has nothing to do with the fame, reputation, and goodwill of Gilead, which offers a widely marketed HEP C HOPE® program to serve the same community . In reality, Respondent has several commercial interests tied to this community and is using the Domain Name to tap into the valuable identity of Gilead 's actual and potential consumers and to profit handsomely off the information it is obtaining from the Domain Name. This profit may be at the expense of patient's health and safety, and shows that the domain name was registered and is being used in bad faith.
The Response also alleges that Complainant's claims that the phone number on the website is inactive, which prove that PPAN/Target Logix/etc. is not offering the services it purports to offer, are incorrect and instead merely due to "Complainant's counsels . .. having drop calls issues, a problem that can only be interpreted as associated with counsels' own telephone lines." This allegation is not plausible, as calls were made by two different counsel and from both work telephone lines and personal cell phone lines, and over a period of four months. Even as recently as July 2016, the phone number published on the site is not active. Furthermore, at least between May and July 2016, the online form has also not been active and is not providing the contact it promises "within 24 hours" or providing a reply at all. Notably, instead of PPAN providing any evidence to back up its allegations that its claimed services are actually offered, it instead tries to blame Complainant's counsels' inability to use a phone, a red herring tactic that does nothing to support its position.
Despite consumers not being able to access the services purportedly being offered on the Domain Name, PPAN further boasts in the Response that between March 2016 and June 2016, it was contacted one thousand one hundred ninety nine (199,000) times via the telephone number provided on the website and over two thousand (2,000) times via the e-mail address and website information request form. Again, the presence of this form in connection with an inactive phone number is further evidence of bad faith registration and use, and demonstrates that Respondent's website is phishing for Gilead's potential or current customers' information. Gilead remains concerned that confusion between its highly-researched and effective services and those of PPAN, which are ineffective and seemingly fraudulent, could create health risks in a community of consumers seeking urgent, immediate information and treatment for severe, life-threatening medical conditions.
c. Respondent's Bad Faith Is Evidenced by Its Affiliation with the <lzarvonihelp.com> Domain Subject to a Gilead UDRP Last Year.
As alleged in Gilead 's Complaint, the Domain Name is also associated or affiliated with the <harvonihelp.com> domain, which was the subject of a UDRP last fall that was filed by Complainant Gilead to protect its famous HARVONI ® trademark. PPAN dismisses the allegation by merely referring to it as a "self-serving conspiracy theory.'' However, PPAN never denies it was associated or affiliated with the <harvonihelp.com> domain. In fact, this affiliation is further evidenced, beyond the detailed evidence provided in the Complaint, by hard data. A review of the DNS history of the <hepatitishope.com> Domain Name and the <harvonihelp.com> domain proves that both domains have resided at the same IP address, identified as 192.99.167.211, and both domains are affiliated with Target Logix. In fact, the Domain Name was registered on August 6, 2015, the same day the UDRP was initiated against the <harvonihelp.com> domain.
The registration and use of two domains, which are both confusingly similar to the registered trademarks of the same company, for a third party's own commercial purposes is evidence of bad faith. Respondent and its affiliates clearly registered the Domain Name and the <harvonihelp.com> domain in an attempt to trade off Gilead's famous marks and worldwide success and to create a false association with the highly-regarded pharmaceutical manufacturer. Respondent's bad faith registration, coupled with its emerging pattern of registering domains that include Gilead's trademarks exacerbates its bad faith.
PPAN 's Response cites two cases that it claims found that the registration of two domain names is insufficient to show a pattern of conduct of bad faith registration, which is a requirement for bad faith to be found under Paragraph 4(b)(ii) of the Uniform Domain Name Registration Policy ("UDRP"). At the outset, Complainant does not limit its allegations of bad faith to Paragraph 4(b)(ii), Complainant also alleges bad faith specificity under Paragraph 4(b)(iv), 4(b)(iii), and otherwise. Further, both cases cited found bad faith and transferred the domain names.
In the first case cited by PPAN, the Panel found that "while not sufficient to establish a pattern of conduct, [the registration of two domains that included Complainant's trademarks] is suggestive that Respondent knew of Complainant's marks." The Panel found bad faith and transferred the infringing domain names. See Interiors & Gifts, Inc. v. Home Interiors, D2000- 0010 (WIPO Mar. 7, 2000) ("the Panel decides that ... the Respondent's domain names have been registered and are being used in bad faith"). Further , the second case cited by PPAN found that no such pattern of conduct was "even asserted by the Complainant." Nevertheless, the Panel found bad faith and transferred the infringing domain name. See Harvey Norman Retailing Pty Ltd v Oxford-University, D2000-0944 (WIPO Sept. 25, 2000) ("there are sufficient grounds to persuade this Administrative Panel that domain names 'harveynorman.net and 'harveynorman.org' were registered and are being used by the Respondent in bad faith").
Here, the two domains were both used in bad faith in connection with the <targetlogix.com> domain and the <leadsmd.com> domain, both of which admittedly sell consumer leads to physicians, to collect consumer data under fraudulent pretexts. Using the trademarks of another, particularly a famous and internationally known company, to collect consumer data to sell is clearly bad faith. Doing so to consumers with life threatening medical conditions, under the guise of a purposed "charity" is unscrupulous.
d. Neither Respondent nor PPAN Is Known by the Domain Name.
Complainant stated in its Complaint, and reasserts in this Reply, that it not affiliated with Respondent or PPAN and it has not granted any rights to Respondent or PPAN to use the HEP C HOPE® trademark or the Domain Name.
Further, Respondent did not respond to the Complaint and did not offer any evidence that it is known by the Domain Name. In fact, Respondent Target Logix LLC is a lead-generating company that provides leads for doctors and "acquire enormous volumes of in-market potential customers" on a "cost per action basis" and not the purveyor of hepatitis prescription assistance services.
PPAN is also not known by the Domain Name. PPAN makes a passing reference in the Response to a d/b/a created in 2015, but there is no evidence of this alleged d/b/a in the record, including in the signed declaration. Further, there is no evidence that (a) the d/b/a was created, (b) the date it was allegedly created was before the registration of the Domain Name, (c) explains why the Domain Name was not registered by the purported d/b/a, and (b) details how the d/b/a is used. There is no reference to a d/b/a on the website and no indication that any purported consumers would identify or know PPAN as the Domain Name. In fact, Complainant's Counsel contacted the Registrar/Recorder County Clerk Branch Office on July 5, 2016, and the clerk could not locate HEPATITIS HOPE as a fictitious business name and could also not locate any fictitious business name statements filed by Pharmacy Patient Advocacy Network.
Finally, PPAN tries to use the Zero International case to assert that it has a legitimate interest in the Domain Name because HEP C HOPE® is a "common word.'' Zero Int'l Holding GmbH & Co. Kommanditgesellschafl v. Beyonet Svcs. and Stephen Urich, Case No. D2000-0l61 (WIPO May 12, 2000). However, HEP C HOPE® is not a common word, or even a "common" combination of words. On the other hand, the mark ZERO is clearly a common word. In fact, despite PPAN's attempts to characterize HEP C HOPE® as common based on Internet search results, the majority of the search hits its provides arc in fact references to Complainant's own HEP C HOPE® mark, in addition to a few articles that used the word HOPE somewhere in the same article as the word HEP C or HEPATITI S. In fact, the results provided by PPAN did not include even one reference to the term HEPATITIS HOPE. Further, in the Zero International case, the complainant had a registration for a stylized design mark that included the word ZERO rather than a registration for the ZERO word mark. Respondent had also put forth evidence of numerous registered trademarks that were comprised of the word ZERO, such that complainant's registration existed in a crowded field of registered ZERO-formative trademarks. No such evidence was put forth by PPAN in this case. In fact, no such evidence exists.
PPAN further tries to justify its use of Complainant's goodwill by citing the Summer Tech case, which involved a registrant that was claiming to use the mark, merely for its generic and descriptive nature. SummerTech Inc. v. Jimmy Hill I iD Tech Camp, FA 1512001652542 (Forum February 4, 2016). However, the Panel found that SUMMERTECH was a registered trademark, not a common term, and distinct. As in here, where HEP C HOPE is a registered trademark, not a common term, and is distinct. Even if Complainant's mark were generic or descriptive, which it is not, Summer Tech was decided based on the size and reputation of the trademark holder. Respondent provided evidence that the Complainant in SummerTech offered its services to only one geographic location in the United States" ( emphasis added). Id. The subsequent Panel found that "Respondent argues and presents convincing arguments that Complainant's business is relatively localized and far away from Respondent's base, and is certainly not so well established that the phrase, 'summer tech', let alone, 'summer tech camp', would be associated solely, or even primarily, with Complainant's services or mark." Id. This is simply not the case here. Complainant Gilead is a large corporation that is well-known internationally. It has promoted its HEP C HOPE® mark in national magazines and on national commercials to sell its pharmaceuticals and services worldwide. Respondent even admits knowledge of Gilead and Gilead 's mysupportpath.com program and offers Gilead's goods on the Domain Name at issue.
e. HEPATITIS HOPE Is Confusingly Similar to Gilead's HEP C HOPE® Mark.
PPAN admits in the Response that "clearly HEP C is an abbreviation for Hepatitis C." PPAN then attempts to use the PNC Financial case to claim that the abbreviation is irrelevant because the Domain Name references hepatitis broadly rather than just hepatitis c, which reduces confusing similarity. See PNC Fin. Svcs. Group, Inc. v. James Anderson I PTC Bank net , FA 1504563 (Forum July 19, 2013). However, in PNC Financial , the marks at issue were two different marks, PNC BANK and PTC BANK, and neither was the abbreviation of the other. Instead, the Panel found that because the letter string PTC was a common abbreviation for numerous things, there was less likelihood of confusion when comparing the marks PNC and PTC. Here, admittedly, the term HEP in Complainant's trademark is an abbreviation for the term HEPATITIS in the Domain Name, and HEP is in fact being abbreviated for HEPATITIS. There are no claims that Complainant's HEP term is referencing anything other than HEPATITIS. Further, as admitted in the Response, PPAN is using the mark in reference to hepatitis c, and not referencing hepatitis generally or hepatitis a or hepatitis b. PPAN's claims that "the Domain Name offers help to all patients suffering from any type or form of Hepatitis" is completely false. The title of the page is "Are you struggling to afford the costs of Hepatitis C treatments?" There are references to hepatitis c throughout the website, the pharmaceuticals mentioned on the website are all for hepatitis c treatment, and there are no references to any other type of hepatitis.
PPAN then cites Transamerica to assert that the test for confusingly similarity should be based on the textual comparison of the marks and ''a straightforward visual or aural comparison,'' while admitting that "each case must be judged on its own merits." Transamerica Corp. v. One Trans-America Corp., FA 1250996 (Forum Apr. 29, 2009). Here, confusing similarity is found in a textual and visual comparison of the HEPATITIS HOPE and HEP C HOPE marks. Further, there is confusing similarity found in an aural comparison, as the marks both begin with HEP and end with HOPE and there is the same alliteration between the marks. Respondent chose to use the identical word "HOPE" not "HELP" or any other word to follow "HEPATITIS" and, in doing so, Respondent registered and is using a domain name that is nearly identical, and at the very least confusingly similar, to Complainant's federally registered HEP C HOPE® mark.
f. PPAN Purports to Offer Competing Services and Is Not Properly Registered as a Charitable Organization.
PPAN has responded to this Complaint with colorful and unfounded claims that it registered the Domain Name (which it did not, as Target Logix, the company that sells patient leads to doctors, did) for the purpose of assisting patients with hepatitis in obtaining affordable medications, education, and insurance assistance (which it failed to do 100% of the time in Complainant's 8 attempts to acquire assistance over a 4 month period). Further, PPAN claims to be registered as a California non-profit corporation, but its status at the State of California Department of Justice is "Not Registered" and it received notice from the Attorney General 's Office on June 14, 2016, that the office is concerned about the validity of its requested status and requires further documentation.
Even if PPAN were a non-profit organization and offering the services it purports to offer, the evidence overwhelmingly proves that the Respondent is using the Domain Name in bad faith to attract and redirect a large volume of Gilead's consumers for its own commercial gain. Further, it has established a pattern of this activity with other domains, including the <harvonihelp.com> domain. Even further, PPAN's purported services are nearly identical to services offered by Gilead, which include "promoting public awareness of treatment for hepatitis C," offering educational resources and pharmaceutical access support, and providing options for financial assistance. PPAN and Respondent's actions fall under Paragraph 4(b)(iii) and 4(b)(iv) of the UDRP, which make it a violation to register and/or use a domain name "for the purpose of disrupting the business of a competitor'' and/or "intentionally attempt[ing] to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location ."
Complainant has satisfied all three elements of its complaint under Paragraph 4(a) of the UDRP, by evidence submitted in its Complaint and supplemented in this Reply, and requests that the Panel transfer the Domain Name to Complainant.
D. Respondent submitted an additional response, which read:
a. Respondent Timely Filed the Response to the Complaint
Gilead alleges that the Response timely filed by Respondent on July 1, 2016, was not in fact submitted by the proper Respondent. Gilead purports that “PPAN is not, and never was, the Respondent.” Gilead’s claim rests on the contrived notion that the Response was never submitted because it was exclusively submitted by PPAN, rather than by both PPAN and Target Logix as indicated in plain view on the first page of the submitted Response. True and correct reproduction of the first page of the Response is provided below.
Target Logix is a technology company that, among other services, provides services in connection with registering, maintaining and servicing websites. PPAN retained Target Logix to acquire, maintain and manage the website associated with the Domain Name on behalf of PPAN. Hence, PPAN is the party that provides services through the Domain Name.
Gilead was well aware as early as April 15, 2016 that the website is controlled by PPAN. In response to Gilead’s contrived and unsubstantiated host of allegations with respect to the use of the Domain Name by PPAN, PPAN clearly identified itself to Gilead as the owner of the website and the Domain Name in its letter, dated April 15, 2016 (“Pharmacy Patient Advocacy Network (the “PPAN”), a nonprofit organization that owns and maintains the website located at URL: http://hepatitishope.com/ (“HepatitisHope Site”)).
Gilead’s unfounded accusation that PPAN tries to disguise “bad faith” conduct by engaging Target Logix’s services is not supported by undisputed evidence that PPAN is exactly what it says it is, namely, a nonprofit organization that exists for purpose of serving the need of underprivileged persons in their pursuit of quality healthcare through education on their disease state, workplace wellness, improved quality of living, and access to quality medications to underinsured/ uninsured patients.
A nexus between PPAN and Target Logix is supported by the declarations of the representatives of both respective companies. PPAN has engaged Target Logix for its expertise in managing and maintaining websites. The fact that Target Logix provides other services to third parties is not indicative of PPAN’s intentions to sell personally identifying information as purported by Gilead. Gilead disregards the truth and evidence on the record to make blatant accusations to support its own contrived claim that PPAN acted in bad faith when it acquired the Domain Name.
In light of the forgoing, the Response was timely filed by Respondent (PPAN and Target Logix), and the evidence and statements contained therein must be considered by the Panel.
b. Complainant Failed to Provide Evidence of Bad Faith
Complainant reiterates its accusation that the voluntary transfer of the <harvonihelp.com> domain name, in connection with which no bad faith conduct was determined, supports its allegation that Respondent registered and maintains the Domain Name in bad faith. See Gilead Sciences, Inc. v. Murad Muradyan / Master Diamant Inc., FA1507001631217 (Forum Aug. 31, 2015).
Complainant without any analysis or proper reliance on the Panel’s decision in Gilead Sciences, Inc., FA150700163121, purports that <harvonihelp.com> was confusingly similar to its trademarks and registered in bad faith, and therefore the registration of the Domain Name constitutes a pattern of bad faith conduct. No such finding, however, has been made by the Panel in Gilead Sciences, Inc., FA150700163121. To the contrary, the Panel specifically states “Because Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <harvonihelp.com> domain name.” Id.
In fact, contrary to Complainant’s opinion, for purposes of this proceeding the ownership and registrant of the <harvonihelp.com> domain is immaterial and has no bearing on findings in the instant proceeding. There was no finding of bad faith in connection with the transfer of the <harvonihelp.com> domain. Hence, even if PPAN or Target Logix were indeed affiliated with the registrant of the <harvonihelp.com> domain, the lack of evidence or finding of bad faith by the Panel support the only proper conclusion, namely, that the registration of the <harvonihelp.com> domain does not show a pattern of bad faith registrations. Moreover, the message submitted to FORUM by the respondent in Gilead Sciences, Inc., FA150700163121 speaks for itself - “It was a pleasure speaking to you today, as I mentioned this domain have been purchased for my clients and I couldn't even imagine it will create so many problems! Please let me know what should I do to fix this situation, I'm ready to transfer domain to harvoni or just release it from my account. Thank you, and sorry for inconvenience.”
Complainant continues to insist, despite clear evidence to the contrary, that PPAN is not offering the services it advertises on the website associated with the Domain Name. Complainant further alleges that the phone and the request form associated with the website are not operational, and therefore the Panel should find that PPAN’s effective services are fraudulent. Respondent submitted evidence that thousands of patients have been able to reach Respondent by phone, e-mail and website. The representative of Respondent declares that to her knowledge the phones associated with the website are operational and she is not aware of any malfunction.
Respondent’s counsel on two separate attempts reached Respondent’s personnel by dialing the number found on the website without any delays or technical issues.
The scope of this proceeding does not allow for any further evidentiary inquire than the evidence submitted by the parties. Therefore, in light of the evidence submitted, the doubt over whether the services of PPAN offered through the website are those that are represented in the Response and this Reply must be resolved in favor of Respondent as the party not bearing the burden of proof. See Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO/D2000-0950 (Proceeding not the appropriate forum for resolving disputed issues as to fact or motive where there is room for reasonable doubt, except by resolving the doubt against the Party bearing the burden of proof).
c. PPAN is a Properly Registered Nonprofit Organization that Provides Access to Quality Medications to Underinsured/ Uninsured Patients
Despite unsubstantiated allegations that are outside the scope of this proceeding, PPAN is a properly registered nonprofit organization under the laws of the state of California that serve the need for patient programs and education geared towards assisting underprivileged persons in their pursuit of quality healthcare through education on their disease state, workplace wellness, improved quality of living, and access to quality medications to underinsured/ uninsured patients.
PPAN is a member of various charitable organizations, including, National Quality Forum (NQF), and participates and sponsors a number of community events such as the Breast Cancer Run/Walk, Children’s Music Fund (to benefit children with disabilities), and American Liver Society, among others.
Complainant improperly smears the goodwill of PPAN to support its false accusations. While the nonprofit status is outside the scope of this proceeding, PPAN is indeed properly registered nonprofit organization that has been maintaining its charitable status.
d. The Domain Name is Not Confusingly Similar to the HEP C HOPE Mark in light of Narrow Protection Afforded to the Mark and Numerous Third Party Uses of The Mark
Without addressing overwhelming evidence presented by Respondent that HEP C HOPE mark is merely descriptive and is at best afforded a very narrow protection under the law, Complainant continues to reiterate its allegations of confusing similarity between its mark and the Domain Name that find no basis in neither the law nor facts.
It is telling that Complainant does not address the evidence of the existence of numerous third parties that use the terms “Hep C” and “Hope” to describe their respective services. It is well settled in the law that such crowdedness of the field indicates the narrowing of the protection afforded to Complainant’s mark. The substantial advertising efforts described and relied upon by Complainant to prove the distinctiveness of the mark only underscore the descriptiveness (weakness) of the mark when faced with the overwhelming number of third party uses of the same terms that comprise Complainant’s mark.
Additionally, substantial differences in appearance, sound, connotation and commercial impression coupled with a lack of evidence of actual confusion (particularly in light of purported vast advertising expenditures) further show that no substantial similarity between the Domain Name and Complainant’s mark can exist.
In the Additional Submission, Complainant further asserts that the term “Hep C” is used by Complainant as abbreviation for all types of Hepatitis, and not only for Hepatitis C. See Additional Submission, p. 7. This assertion is not supported by the evidence on record. Complainant’s website located at hepchope.com clearly provides information only about Hepatitis C, and no other types of Hepatitis are mentioned. The mark itself (HEP C HOPE) is a clear indication that Complainant’s mark concerns only services related to Hepatitis C. Indeed, Complainant’s trademark registration certificate granted by the U.S. Patent and Trademark Office unequivocally states that the services under the HEP C HOPE trademark are provided in connection with “Promoting public awareness of treatment for hepatitis C.” (emphasis added).
To the contrary, the Domain Name does not refer to Hepatitis C, but rather to general Hepatitis (hepatitishope.com). The fact that the website corresponding to the Domain Name also contains information about Hepatitis C is immaterial to this proceeding and inquiry into similarities between the Domain Name and Complainant’s mark. The manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Transamerica Corp. v. One Trans- America Corp., FA 1250996 (Forum Apr. 29, 2009) (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2 (2d ed. 2011, http://www.wipo.int/amc/en/domains/search/overview/); PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563 (Forum July 19, 2013). In sum, Complainant cannot be allowed to expand the scope of its trademark beyond its own definition of the services provided under the mark, namely, “[p]romoting public awareness of treatment for hepatitis C.”
In light of the forgoing, Respondent submits that Complainant failed to meet its burden of proof. In the alternative, if the Panel finds that Complainant met its burden, Respondent provided sufficient basis to retain and use the Domain Name. Hence, Respondent respectfully submits that the Panel must deny Complainant’s request to transfer the Domain Name.
(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.
Paragraph 15(a) of the Rules instructs the Panelists 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 [they] deem[s] applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Complainant claims rights in the HEP C HOPE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,822,990, filed Feb. 17, 2014, registered Sept. 29, 2015). Registration of a mark with the USPTO (or any other similar governmental authority) is sufficient evidence of a complainant’s rights in a mark. Complainant’s rights in the HEP C HOPE mark date back to the application’s filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”).
Complainant claims Respondent’s <hepatitishope.com> domain name is confusingly similar to the HEP C HOPE mark because it contains the mark, except the letter “c,” adding the full word “Hepatitis,” and the gTLD “.com.” “Hepatitis” is merely the full spelling of the abbreviation “hep” and is commonly understood in that fashion. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶4(a)(i).); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).
Respondent claims the <hepatitishope.com> domain name is comprised of common and generic terms and cannot be confusingly similar to Complainant’s mark. The fact that there are terms which might arguably be generic does not affect a confusing similarity analysis under Policy ¶ 4(a)(i). The Panel finds the disputed domain name is confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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.”).
Respondent Vladimir Lenchitsky / Target Logix LLC tries to assert the rights of PPAN, claiming Respondent is merely PPAN’s webmaster. Regrettably for PPAN, the domain name was registered in Respondent’s name and not PPAN’s name. Respondent may not generally assert the rights of a third party in a Proceeding, Mattel, Inc. v. Harems Internet Services, Inc., Claim Number: FA0404000262995 (June 14, 2004) and Mattel, Inc. v. RanComp Ltd., Claim Number: FA0510000579563 (November 29, 2005). To rule to the contrary would only encourage Respondents to claim to be acting for undisclosed principals, especially since the resolving website does not mention PPAN by name. The relationship between a webmaster and a client is not of a sufficiently close nature to allow the webmaster to act as the alter ego of an undisclosed client.
Complainant claims Respondent is not commonly known by the <hepatitishope.com> domain name because the presently available WHOIS information identifies “Vladimir Lenchitsky of Target Logix LLC” as Registrant. The disputed domain name was originally registered using a privacy service so the Registrant was not visible before this Proceeding commenced. Assuming arguendo PPAN’s position may be considered, PPAN does not transact business under the name “Hepatitis Hope.” Respondent has not provided any evidence of being known by the <hepatitishope.com> domain name. Based upon these facts, the Panel finds Respondent is not commonly known by the <hepatitishope.com> domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant claims Respondent fails to use the <hepatitishope.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website provides competing information on Hepatitis treatment similar to that offered by Complainant. This is apparently done to provide leads for doctors for profit. Respondent apparently disclaims any use of the domain name, claiming PPAN is using the domain name instead (although PPAN’s name is not mentioned on the website). This evidence is sufficient to determine Respondent fails to use the <hepatitishope.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum January 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant’s attorneys were unable to get a response from PPAN (or Respondent) by using information on its website (either by dialing the toll free number or using the contact form). This suggests the website is being used for phishing and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant claims the <hepatitishope.com> domain name is not a generic and common combination of words because their use in conjunction refers to Complainant’s HEP C HOPE mark. Respondent claims to the contrary, providing Internet search results to show the generic nature of the terms. The Panel is unconvinced. The terms “Hepatitis,” “Hep C,” and “hope” refer extensively to the HEP C HOPE mark when combined. The <hepatitishope.com> domain name is not generic when combined and used in this stream of commerce, meaning Respondent cannot have acquired rights in the domain name.
Finally, Respondent registered the domain name using a privacy WHOIS service. This means Respondent has done nothing to publicly associate itself with the domain name because Respondent has not disclosed its identity (and PPAN is in a similar positon). Therefore, Respondent has not acquired any rights simply by registering the disputed domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of bad faith registration and use of domain names through a previous UDRP decision found against it and in favor of Complainant. Complainant refers to Gilead Sciences, Inc. v. Murad Muradyan / Master Diamant Inc., FA1507001631217 (Forum Aug. 31, 2015) to demonstrate this pattern. This Panel would disagree. Policy ¶ 4(b)(ii) provides: “[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” [emphasis added]. Complainant has not been prevented from reflecting its mark in a domain name because it owns the <hepchope.com> domain name. Therefore, there is no bad faith under Policy ¶ 4(b)(ii).
Complainant claims Respondent registered and uses the <hepatitishope.com> domain name in bad faith because the resolving website competes with Complainant and disrupts Complainant’s business. Respondent claims not to use the domain name at all, except as an undisclosed agent for PPAN. PPAN’s purported services are nearly identical to Complainant’s offerings in conjunction with the HEP C HOPE mark. Certainly PPAN is a competitor to Complainant (and certainly Respondent admits to acting in concert with PPAN). This leads to the inevitable conclusion Respondent uses the disputed domain name to compete with Complainant in a disruptive manner, which constitutes bad faith under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims Respondent uses the <hepatitishope.com> domain name in bad faith because the resolving website competes with Complainant in providing resources for Hepatitis C treatment. This use is intended to confuse Internet users as to the source of the <hepatitishope.com> domain name (no doubt for profit). Given this evidence, the Panel concludes Respondent is using the <hepatitishope.com> domain name to attract Internet users for profit, which constitutes bad faith use under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant claims Respondent registered the <hepatitishope.com> domain name in bad faith because it knew of Complainant’s rights in the HEP C HOPE mark. Respondent was clearly aware of Complainant and its role in the pharmaceutical treatment of Hepatitis because the resolving website mentions Complainant’s products. It seems obvious Respondent registered and uses the <hepatitishope.com> domain name in bad faith. 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.”).
Complainant claims Respondent registered the <hepatitishope.com> domain name in bad faith because Respondent provided misleading contact information in its registration and hid its identity behind a privacy service. The revealed WHOIS information names “Target Logix, LLC” as the Registrant organization, but that such organization apparently does not exist (at least not in the State of California). The phone number provided on the resolving website does not connect to anything. Neither Respondent nor PPAN is doing anything to disclose their identity. Using a WHOIS privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use of the domain name. Neither Respondent nor PPAN has explained why they used a privacy service (and the resolving website does not clearly disclose either of their identities). Therefore, the Panel finds bad faith registration and use on these grounds.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <hepatitishope.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Sandra J. Franklin,
and Houston Putnam Lowry, Chartered Arbitrator (chair), Panelists
Dated: Friday, July 22, 2016
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