Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Wuxi Yilian LLC, Wuxi Yilian LLC
Claim Number: FA1606001678905
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Wuxi Yilian LLC, Wuxi Yilian LLC (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ordersovaldi.com> ('the Domain Name'), registered with Bizcn.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2016; the Forum received payment on June 10, 2016.
On June 12, 2016, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <ordersovaldi.com> Domain Name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 13, 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@ordersovaldi.com. Also on June 13, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's submissions can be summarised as follows:
In early 2012 the Complainants developed the fanciful SOVALDI name as the brand name for a product designed to treat chronic Hepatitis C virus. Sales exceeded $10 billion in 2014 alone. The product is award winning and the name is of incalculable value and famous. The Complainant owns numerous United States and foreign registrations for the SOVALDI mark dating back to as early as 2012.
The Domain Name was registered in 2016 and incorporates Complainant’s SOVALDI mark in its entirety and is confusingly similar to it adding only the descriptive and non-distinctive term 'order'. A domain name registrant may not avoid likely confusion by simply adding descriptive or non-distinctive terms to another's mark. 'Order' is added to enhance confusion and mislead consumers into believing they can purchase Complainant’s SOVALDI medication from the web site attached to the Domain Name.
Respondent is not known by any name containing the SOVALDI mark. Complainant has not authorised or licensed Respondent to use any of its trade marks in any way. It is not a bona fide offering of goods and services to redirect consumers who are seeking information regarding Complainant’s SOVALDI medication to a web site that purports to offer, on information and belief, counterfeit or fake medication without the need for a doctor's prescription. Finally by prominently featuring the SOVALDI mark on the web site corresponding with a domain name Respondent is attempting to pass himself off as Complainant which is not a bona fide offering of goods or services under Policy 4 (c)(i) or a legitimate non-commercial or fair use.
Since SOVALDI is famous, it is unlikely the Domain Name was arrived at independently. Further, the Domain Name resolves to a commercial web site advertising and purportedly offering for sale a drug targeting the Hepatitis C virus under the SOVALDI mark. Respondent has provided false or incomplete WhoIs information and the address given leads to the middle of a major road. The drug is likely fake or counterfeit of unknown constitution. The web site suggests it may be a generic version of Complainant's SOVALDI medication that is cheaper and a prescription is not required. The website also advertises the sale of controlled substances including Xanax, Tramadol and Valium which are not produced by the Complainant. Respondent is not an authorised seller or distributor of the SOVALDI medication and appears to have no licence to sell prescription drugs. Respondent is attempting to compete by causing confusion with the Complainant's mark. The Respondent registered the Domain Name to disrupt the Complainant's business, take unfair advantage of Complainant's goodwill in the SOVALDI mark and attract customers based on confusion. The Domain Name was registered and is being used in bad faith.
Respondent has a history of owning numerous domain names that correspond to and/or incorporate the names or marks of other well-known business entities and products and has been involved in a number of past domain name proceedings resulting in transfer of the domains at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant has provided evidence that its group of companies has common law rights dating back to 2013 in the mark SOVALDI for a product designed to treat the hepatitis C virus.
The Domain Name resolves to a commercial web site advertising and offering for sale a drug targeting the Hepatitis C virus under the SOVALDI mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1)the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)Respondent has no rights or legitimate interests in respect of the domain name; and
(3)the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s SOVALDI mark (in which it has provided evidence it has common law rights dating back to 2013 if not the evidence of its registered rights) and the generic word “order”. The addition of the word “order” does not serve to distinguish the Domain Name from the Complainant’s mark. See Broadcom Corp v Domain Depot FA 96854 (Nat. Arb. Forum Apr 23 2001) (finding the broadcomonline.com domain name is confusingly similar to the complainant's BROADCOM mark); See also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) (Holding that the mere addition of a generic top-level domain ("gTLD") does not serve to adequately distinguish the Domain Name from the mark.) The Panelist finds that the Domain Name is confusingly similar to the Complainant’s mark SOVALDI for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.
The Panelist has had an opportunity to review the Respondent's web site and it was not clear to the panellist upon a quick review of the site that it was not a site authorised by the Complainant mainly due to use of the Complainant's SOVALDI mark at the top of the web site and in descriptions such as 'cheap sovaldi.' As such the web site must be considered to be misleading and the Respondent passing itself and its products off as connected with or authorised by the Complainant. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.) As such the panelist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading customers into believing it is associated with the Complainant the panelist believes that the Respondent is attempting to pass itself off as authorised by the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's mark as to the source or endorsement of its web site and the provenance of its products under Para 4 (b) (iv) of the Policy and also causing disruption to the Complainant under Para 4 (iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb. Forum Dec. 28 2005)('Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii)). Also Asbury Auto, Group, Inc. v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv)). As such the Panelist need not consider additional arguments as to bad faith made by the Complainant and finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ordersovaldi.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<July 18, 2016 >>
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