Gilead Sciences, Inc. v. Cameron Jackson
Claim Number: FA1607001682278
Complainant: Gilead Sciences, Inc. of Foster City, California, United States of America.
Respondent: Cameron Jackson of Norfolk Island, Norfolk.
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: Instra Corporation Pty Ltd.
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 Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: July 1, 2016
Commencement: July 5, 2016
Default Date: July 20, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration no. 3,251,595 GILEAD, which was registered on June 12, 2007 for various goods in class 5, as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the Complainant’s GILEAD Mark and is confusingly similar to such mark. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the URS Procedure despite the addition of additional generic terms, such as ”sciences.” In addition, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is confusing similar to the GILEAD Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has no legitimate right or interest to the disputed domain name, as it is not affiliated with the Complainant, as it has not been granted any rights to use the GILEAD Mark or to register the disputed domain name, as it is not commonly known by the GILEAD Mark and does not operate a company under that name, as it is engaged in a widespread pattern of cybersquatting other brands, and as it has a record of bad faith use and registration proven in 12 UDRP cases.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name resolves to a placeholder website with no real or relevant content.
The Examiner finds that the Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name prevents itself from registering the disputed domain name and that the registration of the disputed domain name is consistent with the bad faith demonstrated by registering other third parties’ famous brands.
The Examiner accepts that the Respondent was most likely aware of the Complainant’s highly distinctive GILEAD Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith. Such finding is supported by the Respondent’s pattern of registering third parties’ trademarks. As to bad faith use, the Examiner accepts that the Respondent engaged in a pattern of preventing trademark holders from reflecting their trademarks in corresponding domain names as set out in URS Procedure 1.2.6.3.b.
The Examiner finds that the disputed domain name was registered and is being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<gileadsciences.xyz>
Mr. Peter Müller, Examiner
Dated: July 25, 2016
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