Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1606001680055
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sovaldicostindia.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 21, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sovaldicostindia.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sovaldicostindia.com. Also on June 21, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is renowned for its development and manufacturing of innovative medicines for people with life-threatening illnesses around the world. Complainant owns numerous United States and foreign registrations for the SOVALDI mark dating back to as early as 2012. Complainant has used and acquired rights in the SOVALDI Mark well prior to January 27, 2016, the registration date for the disputed domain name. The disputed domain name incorporates Complainant’s SOVALDI mark in its entirety, and is confusingly similar to the SOVALDI mark. The disputed domain name merely adds the descriptive and non-distinctive term, “cost” to the SOVALDI mark. Moreover, the addition of a geographically descriptive term such as “india” does not distinguish the disputed domain name from Complainant’s SOVALDI mark. As such, the disputed domain name is nearly identical and confusingly similar to the Complainant's SOVALDI mark.
ii) Respondent is not commonly known as the disputed domain name or any name containing Complainant’s SOVALDI mark. Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the SOVALDI mark as Respondent’s name or nickname. Complainant has not authorized or licensed to Respondent use of any of its trademarks in any way. Neither can Respondent claim that it is offering bona fide goods or services by redirecting consumers who are seeking information regarding Complainant’s SOVALDI medication to a website that purports to offer counterfeit or fake medication without the need for a doctor’s prescription. Respondent does not possess the requisite license to sell, stock, or exhibit for sale any of the drugs offered in the website associated with the disputed domain name. Moreover, even if Respondent were offering legitimate “generic” versions of Complainant’s medication, which it is not, use of a pharmaceutical brand in a domain name to refer to a website purportedly offering information and the sale of the pharmaceutical drug is not legitimate use under the Policy. Respondent sells the personal information collected from Complainant’s misdirected users as part of a phishing scheme, thereby deriving substantial profits. As such, Respondent is improperly capitalizing on the SOVALDI Mark, which does not amount to legitimate noncommercial or fair use of the disputed domain name. Finally, by prominently featuring the SOVALDI mark and the SOVALDI Logo on the website corresponding with the disputed domain name, “Respondent attempts to pass himself off as Complainant. This is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”
iii) The fame and unique qualities of the SOVALDI mark, which was adopted and applied for by Complainant well before the registration of the disputed domain name, makes it extremely unlikely that Respondent created the disputed domain name independently. Moreover, even constructive knowledge of a famous mark like SOVALDI is sufficient to establish registration in bad faith. Furthermore, where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Respondent’s operation of a website under the SOVALDI mark purportedly offering for sale a drug used for targeting the Hepatitis C virus in direct competition with Complainant’s product – along with its prominent and repeated use of Complainant’s SOVALDI mark throughout the website – indicate that Respondent registered and is using the disputed domain name in bad faith to disrupt Complainant’s business, take unfair advantage of Complainant’s goodwill in the SOVALDI mark, and attract customers based on confusion. Moreover, Respondent’s disputed domain name appears to be part of a phishing scheme in which Respondent purports to offer for sale a generic version of the SOVALDI medication, but instead collects personal information from users seeking such services. As such, the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain name was registered on January 27, 2016.
C. Complainant's Additional Submission
Pursuant to the Panel's Procedural Order dated July 26, 2016, Complainant filed a copy of each of the certificates of registrations for the SOVALDI mark with the USPTO (e.g., Reg. No. 4,468,665, registered Jan. 21, 2014) and international registration number 1,133,053 (registered Aug. 22, 2012) on July 26, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant submits that it is renowned for its development and manufacturing of innovative medicines for people with life-threatening illnesses around the world. Complainant alleges that it owns numerous United States and foreign registrations for the SOVALDI mark dating back to as early as 2012. Complainant has used and acquired rights in the SOVALDI mark well prior to January 27, 2016, the registration date for the disputed domain name. The Panel finds that it owns a good number of United States and foreign registrations for the SOVALDI mark, inter alia, the SOVALDI mark with the USPTO (e.g., Reg. No. 4,468,665, registered Jan. 21, 2014) and international registration number 1,133,053 (registered Aug. 22, 2012) which Complainant argues demonstrate its rights in the mark. Panels have found that a registration with the USPTO is sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Complainant has demonstrated rights in the SOVALDI mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name incorporates Complainant’s SOVALDI mark in its entirety, and is confusingly similar to the SOVALDI mark. Complainant asserts that the disputed domain name merely adds the descriptive and non-distinctive term, “cost” to the SOVALDI mark. Complainant also argues that the addition of a geographically descriptive term such as “india” does not distinguish the disputed domain name from Complainant’s SOVALDI mark. The Panel notes that Respondent has affixed the generic top-level domain (“gTLD”) “.com” to the domain. Panels have held that neither the addition of a generic term nor the affixation of the “.com” gTLD is sufficient to differentiate a domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel agrees with Complainant and holds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known as the disputed domain name or any name containing Complainant’s SOVALDI mark. Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the SOVALDI mark as Respondent’s name or nickname. Complainant submits that it has not authorized or licensed to Respondent use of any of its trademarks in any way. In light of Respondent’s failure to submit a response, coupled with the WHOIS listing 'Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org' as registrant of record, the Panel agrees and finds Respondent not commonly known by the disputed domain per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims that neither can Respondent claim that it is offering bona fide goods or services by redirecting consumers who are seeking information regarding Complainant’s SOVALDI medication to a website that purports to offer counterfeit or fake medication without the need for a doctor’s prescription. Complainant avers that Respondent does not possess the requisite license to sell, stock, or exhibit for sale any of the drugs offered in the website associated with the disputed domain name. Complainant also asserts that even if Respondent were offering legitimate “generic” versions of Complainant’s medication, which it is not, use of a pharmaceutical brand in a domain name to refer to a website purportedly offering information and the sale of the pharmaceutical drug is not legitimate use under the Policy. Complainant contends that Respondent sells the personal information collected from Complainant’s misdirected users as part of a phishing scheme, thereby deriving substantial profits, and thus Respondent is improperly capitalizing on the SOVALDI Mark, which does not amount to legitimate noncommercial or fair use of the Domain Name. Complainant also submits that by prominently featuring the SOVALDI mark and the SOVALDI Logo on the website corresponding with the disputed domain name, “Respondent attempts to pass himself off as Complainant.” The Panel notes Complainant's evidence, which Complainant argues represents pages to which the disputed domain has resolved. Such use cannot be considered to evince rights and legitimate interests in a domain name. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, this Panel agrees that no bona fide offering of goods or services or any legitimate noncommercial or fair use exists through the disputed domain name per Policy ¶¶ 4(c)(i) or (iii). Therefore, Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(a)(ii).
Complainant argues that Respondent’s operation of a website under the SOVALDI mark purportedly offering for sale a drug used for targeting the Hepatitis C virus in direct competition with Complainant’s product—along with its prominent and repeated use of Complainant’s SOVALDI mark throughout the website—indicate that Respondent registered and is using the disputed domain name in bad faith to disrupt Complainant’s business, take unfair advantage of Complainant’s goodwill in the SOVALDI mark, and attract customers based on confusion. Previous panels have held that a respondent’s attempt to misrepresent itself as a complainant is evidence of bad faith registration and use. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Previous panels have also concluded that a respondent’s use of a domain to sell a complainant’s goods and services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii)”). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s disputed domain name appears to be part of a phishing scheme in which Respondent purports to offer for sale a generic version of the SOVALDI medication, but instead collects personal information from users seeking such services. This Panel finds an attempt by Respondent to attract Internet users via a confusingly similar domain name and induce them to interact with it through passing off and/or phishing and thereby accrue financial gain, conduct proscribed by Policy ¶ 4(b)(iv). see Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <ellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Lastly, Complainant contends that the fame and unique qualities of the SOVALDI mark, which was adopted and applied for by Complainant well before the registration of the disputed domain name, makes it extremely unlikely that Respondent created the disputed domain name independently. Complainant also contends that even constructive knowledge of a famous mark like SOVALDI is sufficient to establish registration in bad faith. Complainant further contends that where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Given the circumstances of the fame and unique qualities of the Complainant's SOVALDI mark, which was adopted and applied for by Complainant well before the registration of the disputed domain name, coupled with the fact that Complainant plainly uses the SOVALDI mark throughout the disputed domain name’s website, the Panel infers that Respondent registered the disputed domain name in bad faith and with actual knowledge of Complainant’s rights. 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.”).
Therefore, Complainant has established the requirement of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sovaldicostindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 28, 2016
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