Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. AFFORDABLE DRUGS / SOVALDI PRICE IN INDIA
Claim Number: FA1609001696092
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Anne H. Peck and Chantal Z. Hwang of Cooley LLP, Palo Alto, California, USA. Respondent is AFFORDABLE DRUGS / SOVALDI PRICE IN INDIA (“Respondent”), represented by Steven Rinehart, Salt Lake City, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sovaldipriceinindia.com> and <harvonipriceinindia.com> (the “Disputed Domain Names”), registered with eNom, 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2016; the Forum received payment on September 29, 2016.
On October 3, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <sovaldipriceinindia.com> and <harvonipriceinindia.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@sovaldipriceinindia.com, postmaster@harvonipriceinindia.com. Also on October 4, 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 October 24, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on October 28, 2016.
On November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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 states that Gilead Sciences, Inc. is “renowned for its development and manufacturing of innovative medicines for people with life-threatening illnesses around the world” and that Gilead Sciences Ireland UC is a subsidiary of Gilead Sciences, Inc. These two entities are referred to herein interchangeable, as the context may require, as “Complainant.”
Complainant states that “[i]n early 2012, Gilead developed the SOVALDI name to be the global brand name for its pharmaceutical product sofosbuvir that treats chronic Hepatitis C virus” and that “[t]he SOVALDI medication has been a great success, with sales exceeding $10 billion in 2014 alone, making it one of the top drug launches of all time.” Complainant states that it “owns numerous United States and foreign registrations for the SOVALDI Mark dating back to as early as 2012,” including Indian Reg. No. 2,401,492, registered August 13, 2014.
Complainant further states that it “develops, manufactures, and offers for sale the HARVONI pharmaceutical product, a breakthrough treatment for chronic Hepatitis C virus” which “has been a great success, with sales exceeding $10.5 billion in the first nine months of 2015 alone, making it one of the top drug launches of all time only to be rivaled by Gilead’s initial HCV medication SOVALDI®.” Complainant states that it “owns numerous United States and foreign registrations for the HARVONI Mark dating back to as early as 2014,” including Indian Reg. No. 2,617,327, registered December 7, 2015.
The Disputed Domain Name <sovaldipriceinindia.com> was created on August 4, 2015, and the Disputed Domain Name <harvonipriceinindia.com> was created on September 4, 2015.
The Disputed Domain Names “currently resolve to commercial websites advertising and purportedly offering for sale drugs used for targeting the Hepatitis C virus.”
Complainant argues, in relevant part, the following:
· The Disputed Domain Names are identical or confusingly similar to the SOVALDI Mark and the HARVONI Mark because they “merely incorporate the descriptive and non-distinctive term ‘price’” which “refer[s] to the act of purchasing a medicine online”; “inclusion of the term ‘India’ in the Domain Names appear to be part of a concerted effort by Respondent to attract users in India seeking to purchase Complainant’s Medications to its own website(s)”; and inclusion of the word “in” is simply a “descriptive term… intended to enhance consumer confusion and mislead consumers into believing that Respondent is an authorized seller or distributor of Complainant’s Medications in India, which he is not.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not commonly known as the Domain Names or any name containing Complainant’s Marks”; “Complainant has not authorized or licensed to Respondent use of any of its trademarks in any way”; “[u]se 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”; and “by prominently featuring Complainant’s Marks on the websites corresponding with the Domain Names, Respondent attempts 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 noncommercial or fair use under Policy ¶4(c)(iii).”
· The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “it is impossible to conceive of any potential legitimate use of the Domain Names”; “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 commercial websites under Complainant’s Marks suggests that Respondent registered the Domain Names in bad faith to disrupt Complainant’s business, take unfair advantage of Complainant’s goodwill in Complainant’s Marks, and/or attract customers based on confusion”; and “Respondent’s use of Complainant’s Marks along with the descriptive and non-distinctive terms commonly associated with Complainant’s Medications further confirms that Respondent registered the Domain Names in bad faith in order to enhance consumer confusion and mislead consumers into believing the websites originate from, is associated with, or is sponsored by Complainant.”
B. Respondent
Respondent contends that the Complaint is “procedurally deficient” because “[s]eparate Complainants cannot simultaneously file a single Complaint asserting separate trademark rights.”
Respondent states: “The Respondent in this matter Soul of Healing is a 501(c)(3) charitable organization approved by the IRS to distribute life-saving pharmaceutical products to disadvantaged peoples primarily in underdeveloped countries.”
Respondent argues, in relevant part, the following:
· The Disputed Domain Names are not confusingly similar to Complainant’s trademarks because “[t]he Disputed Domains describe the price of the drugs identified by the Complainant’s marks, not the drugs themselves.”
· Respondent has rights or legitimate interests in respect of the Disputed Domain Names “because the Respondent is a nonprofit organization, its use ‘noncommercial’”; “[b]oth of the Complainant’s marks SOVALDI and HARVONI have become merely descriptive of the active ingredients in these drugs in the underdeveloped world”;
· The Disputed Domain Names were not registered and are not being used in bad faith because “[t]he doctrine of nominative use provides that any entity may use the trademark of another as a reference to describe the other product, or to compare it to their own”; and “Respondent clearly identifies itself at the top of the site as not being the Complainant, and is using the marks SOVALDI and HARVONI only to compare the generic products of the Respondent to the products of the Complainant, including comparison of the prices.”
C. Additional Submissions
In its supplemental filing, Complainant states that the Response “was filed on behalf of an entity named ‘Soul of Healing’ and therefore does not comply with the ICANN Rules” because “a response to a complaint in these proceedings must be filed on behalf of the ‘holder of a domain-name registration against which a complaint is initiated’” and “Soul of Healing does not meet this criterion.” Further, “[t]here is simply no explanation put forth as to why Soul of Healing has decided to respond to Gilead’s Complaint against Respondent AFFORDABLE DRUGS / SOVALDI PRICE IN INDIA.”
Complainant further states that “[n]othing in the Rules prohibit two separate entities from jointly initiating a UDRP proceeding” and that “the Rules expressly provide that a Complainant may specify multiple trademarks or service marks in a single complaint upon which it is based.”
Complainant’s argument largely reiterates those set forth in the Complaint and adds that “[n]othing in the Response refutes the conclusion that the Domain Names are likely to be confused with Complainant’s Marks”; that “[w]here, as here, the Response concedes that Respondent is deriving income from its adoption of Complainant’s Marks, a fair use argument cannot be supported”; and that “Respondent has essentially conceded that its use of the Domain Names are in bad faith through its admission that it derives revenue from the Domain Names and that it must use these marks in order to target the ‘tens of thousands of people in India and elsewhere’ that ‘identify these drugs’ using Complainant’s Marks.”
Preliminary Issue: Multiple Complainants and Multiple Trademarks
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Accordingly, the Panel finds that nothing prohibits both of the Complainants to bring the Complaint and to include two different trademarks in this proceeding.
Preliminary Issue: Deficient Response
Complainant claims that the provided Response is deficient and should not be considered in this proceeding. Complainant notes that the party named as Respondent here is “AFFORDABLE DRUGS / SOVALDI PRICE IN INDIA,” and not “Soul of Healing, Inc.” although “Soul of Healing, Inc.” has responded. Complainant urges that if the Panel allows such third party to intervene, it should do so only if that party demonstrates that the domain name registrant is either an authorized representative of the intervening party, or that it is managed or controlled by the intervening party. Complainant maintains that, in this instance, the evidence suggests a lack of such connection, as Complainant’s Additional Exhibit A indicates Respondent is located in Bengaluru, India while publicly available records provided in Complainant’s Additional Exhibit B purportedly suggest no connection to the named Respondent.
Because the Panel finds that nothing in the Response is determinative to its decision, the Panel makes no determination as to whether it is deficient and should be disregarded. See, e.g., Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response”).
The Panel finds that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that Respondent registered and is using the Disputed Domain Names 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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SOVALDI Mark and the HARVONI Mark.
As to whether the Disputed Domain Names are identical or confusingly similar to the SOVALDI Mark and the HARVONI Mark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “sovaldipriceinindia” and “harvonipriceinindia”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level portion of each of the Disputed Domain Names contains the SOVALDI Mark or the HARVONI Mark, the Panel is initially inclined to find that it is confusingly similar to these marks. The addition of the words “price in India” does not alleviate any confusing similarity, especially because, as Complainant states, these words are descriptive and non-distinctive. See, e.g., F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, Case No. D2006-0047 (finding the domain name <purchasevalium.com> confusingly similar to the trademark VALIUM because the word “purchase” is “descriptive and add[s] no distinctiveness or source of origin elements whatsoever to the domain name[] at issue”); and Ticketmaster Corporation v. Senthil Kumar, NAF Claim No. 744436 (finding the domain name <indiaticketmaster.com> confusingly similar to the trademark TICKETMASTER because “[i]t is obvious that the disputed domain name is confusingly similar, for the purposes of the Policy, to Complainant’s mark”);
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not commonly known as the Domain Names or any name containing Complainant’s Marks”; “Complainant has not authorized or licensed to Respondent use of any of its trademarks in any way”; “[u]se 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”; and “by prominently featuring Complainant’s Marks on the websites corresponding with the Domain Names, Respondent attempts 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 noncommercial or fair use under Policy ¶4(c)(iii).”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has submitted a response, its response does not establish any rights or legitimate interests under the Policy.
First, Respondent does not argue that it has “been commonly known by the domain name” and therefore cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Second, Respondent’s activities do not constitute “a bona fide offering of goods or services” under paragraph 4(c)(i) of the Policy because it is unclear what product Respondent is actually selling on its website and, even if the products are in fact those associated with the relevant trademarks, Respondent cannot be considered a reseller because, among other things, it has not accurately and prominently disclosed its lack of a relationship with Complainant. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903. Third, by selling products on its websites, Respondent cannot be considered to be acting “without intent for commercial gain” under paragraph 4(c)(iii) of the Policy, even if Respondent is a non-profit entity (which is at best unclear on the record). See, e.g., Beachbody, LLC v. Jianzong Zhan, WIPO Case No. D2012-0819 (“use by Respondent of the Disputed Domain Name is obviously commercial” where “Respondent is using the Disputed Domain Name to advertise, offer, and sell” products); and Verizon Trademark Services LLC v. Mohd Daoud, WIPO Case No. D2016-1380 (finding no rights or legitimate interests where “Complainant asserts that Respondent is making commercial use of the disputed domain name in connection with an offering of services… targeting Complainant’s well-known mark”).
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), for the reasons set forth above.
Numerous panels have found that use of a domain name containing a complainant’s pharmaceutical trademark in connection with a website that offers pharmaceuticals for sale, without permission from the trademark owner, is bad faith. The Panel agrees with the decisions cited by Complainant, including F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 (“Respondent’s use of the Complainant’s trademark to sell products that compete with the Complainant’s medicine which bears the name of the mark provides further evidence of bad faith”); Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419 (“use of the disputed domain name for an online pharmacy site on which the Respondent sells a large variety of drugs including counterfeit products and placebo products clearly indicates that Respondent's primary intent was to redirect Internet users to his website and thus capitalizing on the goodwill of Complainant's trademark”); and Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (finding bad faith where “there can be no dispute that the Respondent had knowledge of the VIAGRA mark at the time of registration of the disputed domain name, and no dispute that the Respondent is using the domain name to attract Internet users to a commercial website where a generic equivalent of the VIAGRA is offered for sale”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sovaldipriceinindia.com> and <harvonipriceinindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: November 14, 2016
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