Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Umut Yasar TORUN / Cinar Ecza Deposu ve Dis Tic.A.S. / Pharmaturca ecza deposu ve dis tic.ltd.sti
Claim Number: FA1606001680719
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Umut Yasar TORUN / Cinar Ecza Deposu ve Dis Tic.A.S. / Pharmaturca ecza deposu ve dis tic.ltd.sti (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buysovaldi.org> and <buysovaldicanada.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 23, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <buysovaldi.org> and <buysovaldicanada.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@buysovaldi.org, and postmaster@buysovaldicanada.com. Also on June 24, 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 14, 2016.
On July 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the SOVALDI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,468,665, registered June 21, 2014), and therefore has rights in the mark. Respondent’s <buysovaldi.org> or <buysovaldicanada.com> domain names are confusingly similar to the SOVALDI mark because they add the generic term “buy” to the beginning of the mark, in one domain the geographic term “Canada,” and affix a generic top-level domain (“gTLD”) to the end.
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) because the WHOIS does not reflect as much. Further, the domain redirects Internet users to a website purporting to offer prescription medication without a doctor’s approval. Respondent’s use of the disputed domain names is not a bona fide offering, nor a legitimate noncommercial or fair use. See Compl., at Attached Exs. 9–10.
Respondent registered and used the disputed domain in bad faith. Respondent operates a website offering prescription drugs in direct competition with Complainant, disrupting Complainant’s business while attracting for commercial gain Internauts to Respondent’s website. Finally, Respondent registered and used the disputed domain with at least constructive knowledge of the SOLVALDI mark and Complainant’s rights in the mark.
B. Respondent
In its response, Respondent states as follows:
“We are hereby submitted our response on time.
Firstly, while we were using this domain name, we didn’t know that it will cause a domain name dispute problem. When we’ve found out the complain, we’ve stopped the using this domain name. This domain name is out of service right now. After 30 days our registration will be ended automatically. If the complainant wants to have use this domain name, we are ready to give up our use rights of this domain name and ready to help about that.”
The Panel notes that <buysovaldi.org> was registered on August 12, 2015 and <buysovaldicanada.com> was registered on August 21, 2015.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent has registered the disputed domain names under different aliases in an effort to avoid detection and transfer. Complainant believes this allegation is supported by the fact that the websites to which the disputed domain names resolve feature identical content. Complainant asserts it would be unnecessarily burdened by having to expend the additional resources required to re-file an action as to any dismissed party or parties. See Complaint—Submitted June 23, 2016—at paragraph 18.
Complainant adds further that the Domain names share the same name server. See Complaint—Submitted June 23, 2016—at paragraph 19. See also Ex. 4 of Complainant’s Submissions.
In light of the arguments and evidence presented by Complainant, taking into consideration that the Respondent was properly served with the Complaint, further, considering Respondent’s Response to the Complaint, which is devoid of any defense against the allegations, this Panel is of the opinion that the disputed domain names are controlled by the same person or entity.
It is accordingly appropriate to proceed in a single complaint against multiple registration names. See Adobe Sys Inc. v Domain Oz, Case No. D2000-0057 (WIPO March 22, 2000) (domains registered to multiple names found to be held by a single entity); Washington Mutual, Inc. v. Phayze Inc., Peter Carrington, and Party Night Inc., Case No. D2003-0283 (WIPO July 3, 2003) (same).
PRELIMINARY ISSUE – CONSENT TO TRANSFER
Respondent responds to the Complaint stating that, “We are hereby submitted our response on time”. This is a clear reference to the Complaint, the contents of which Respondent is deemed to have read and understood. The Complaint refers to 2 domain names and makes a successful case that the domain names are controlled by the same entity.
Respondent in its Response further stated as follows:
Firstly, while we were using this domain name, we didn’t know that it will cause a domain name dispute problem. When we’ve found out the complain, we’ve stopped the using this domain name. This domain name is out of service right now. After 30 days our registration will be ended automatically. If the complainant wants to have use this domain name, we are ready to give up our use rights of this domain name and ready to help about that.
Based on the evidence, this Panel is of the opinion that Respondent’s reference to domain name in the singular was really a reference to both domain names. The Panel finds that under the present circumstances, where Respondent has not contested the transfer of the disputed domain names, but instead agrees to transfer the domain names in question to Complainant-there is no need to pursue the traditional UDRP analysis, rather that it is more expedient and judicial to forego said analysis. Accordingly, the Panel has decided to forego the traditional UDRP analysis and order an immediate transfer of the <buysovaldi.org> and <buysovaldicanada.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
Accordingly, it is Ordered that the <buysovaldi.org> and <buysovaldicanada.com> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: July 31, 2016
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