Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Bernou Bom
Claim Number: FA1609001695322
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Bernou Bom (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buytruvadaonline.info>, registered with The Registrar Company B.V..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 23, 2016.
On September 26, 2016, The Registrar Company B.V. confirmed by e-mail to the Forum that the <buytruvadaonline.info> domain name is registered with The Registrar Company B.V. and that Respondent is the current registrant of the name. The Registrar Company B.V. has verified that Respondent is bound by the The Registrar Company B.V. 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 September 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@buytruvadaonline.info. Also on September 26, 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 October 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant registered the TRUVADA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,915,213, registered Dec. 28, 2004), and holds rights to the mark that it uses for marketing HIV medication. Respondent’s domain name, <buytruvadaonline.info>, [1]is confusingly similar to Complainant’s mark, because it merely adds the generic terms “buy” and “online” to the Complainant’s entire TRUVADA mark.
2. Respondent has no rights or legitimate interests in the domain name. Complainant has not granted Respondent any sort of permission to use its TRUVADA mark, and the Respondent is not commonly known as <buytruvadaonline.info>.
3. Respondent is attempting to pass itself off as Complainant and prominently displays Complainant’s TRUVADA mark on its website.
4. The TRUVADA mark is also unique and fanciful so that it is impossible to use the mark without an affiliation to Complainant. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
5. Respondent registered and has been using the domain name in bad faith. Respondent is attempting to disrupt Complainant’s business by offering counterfeit versions of Complainant’s TRUVADA medication. Respondent is clearly attempting to pass itself off as Complainant, as the uniqueness of the TRUVADA mark also goes to show that Respondent registered the domain name with knowledge of the mark. Respondent has thus engaged in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRUVADA mark. Respondent’s domain name is confusingly similar to Complainant’s TRUVADA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <buytruvadaonline.info> domain name, and that Respondent registered and uses the 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 has registered its TRUVADA mark with the USPTO (Reg. No. 2,915,213, registered Dec. 28, 2004), and it has rights in the mark under Policy ¶ 4(a)(i). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (FORUM July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Complainant additionally contends that Respondent’s <buytruvadaonline.info> domain name is confusingly similar to its TRUVADA mark. Respondent’s domain name incorporates the TRUVADA mark in its entirety, and merely adds the generic terms “buy” and “online.” The addition of a generic term and addition of the “.info” gTLD are insufficient to distinguish a domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (FORUM Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Infineon Technologies AG v. mustafa mashari, FA 1619868 (FORUM June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”). Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to the TRUVADA mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <buytruvadaonline.info> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <buytruvadaonline.info> domain name. Complainant states it has not licensed or otherwise authorized Respondent to use its TRUVADA mark in any fashion, and that Respondent is not commonly known by the domain name since TRUVADA is a unique term with no meaning outside Complainant’s business. The WHOIS information for the domain name in question lists “Bernou Bom” as the registrant. On this record the Panel concludes that Respondent is not commonly known by the <buytruvadaonline.info> domain name. See Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (FORUM Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (FORUM May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel holds that Respondent is not commonly known by <buytruvadaonline.info>.
Complainant further asserts that Respondent is not using the domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s mark on the resolving website of the <buytruvadaonline.info> domain name to pass itself off as the Complainant, and to divert mistaken internet users to buy counterfeit medication. Complainant has submitted screen shots of Respondent’s website to support its contention. Such conduct does not amount to a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶ 4(c)(i) or (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (FORUM Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <buytruvadaonline.info> domain name in bad faith. Complainant first argues that Respondent’s primary purpose for registering the domain name was to disrupt Complainant’s business. Complainant alleges that Respondent is using the domain name to purport to offer counterfeit versions of Complainant’s pharmaceutical drug TRUVADA. Because the record supports this assertion, the Panel concurs that disrupting a complainant’s business by selling counterfeit goods is in bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (FORUM Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds Respondent in bad faith under Policy ¶ 4(b)(iii).
Complainant additionally argues that Respondent is attempting to pass itself off as Complainant in bad faith. Complainant alleges that Respondent is using its TRUVADA mark on the resolving website of the domain name, and argues that the TRUVADA mark could not have a possible use other than to misrepresent itself as Complainant. Such conduct amounts to bad faith. See Monsanto Co. v. Decepticons, FA 101536 (FORUM Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As such the Panel may find Respondent to be passing itself off as Complainant in violation of Policy ¶ 4(a)(iii).
Complainant additionally contends that the distinctive fame and uniqueness of its TRUVADA mark leads to the inference that Respondent registered the <buytruvadaonline.info> domain name with actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that is clear that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (FORUM Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <buytruvadaonline.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 31, 2016
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