Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Mr.Tarun Garg / SOUTH DELHI PHARMA
Claim Number: FA1609001696095
Complainant is Gilead Sciences, Inc. and Gilead Sciences Ireland UC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Mr.Tarun Garg / SOUTH DELHI PHARMA (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <genericharvonidistributor.com>, <genericharvonireseller.com>, <genericharvonisupplier.com>, <indianharvonidistributor.com>, <indianharvonireseller.com>, <indianharvonirsupplier.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2016; the Forum received payment on September 29, 2016.
On September 30, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <genericharvonidistributor.com>, <genericharvonireseller.com>, <genericharvonisupplier.com>, <indianharvonidistributor.com>, <indianharvonireseller.com>, <indianharvonirsupplier.com>, domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 October 3, 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@genericharvonidistributor.com, postmaster@genericharvonireseller.com, postmaster@genericharvonisupplier.com, postmaster@indianharvonidistributor.com, postmaster@indianharvonireseller.com, postmaster@indianharvonirsupplier.com. Also on October 3, 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 November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in HARVONI and alleges that the disputed domain names are all confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells pharmaceutical preparations by reference to the trademark HARVONI which is the subject of United States Patent & Trademark Office Trademark Reg. No. No. 4,608,545, registered Sept. 23, 2014;
2. The disputed domain names were all registered on June 30, 2016, postdating Complainant’s trademark registration;
3. The disputed domain names redirect Internauts to websites which promote the sale of pharmaceuticals and which prominently feature the trademark; and
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant therefore has rights since it provides proof of its trademark registration with a Federal authority.
For the purposes of comparison, the gTLD “.com” can be disregarded since it is generally of no source distinguishing value.[i] The disputed domain names incorporate the trademark into composite terms by way of the addition of (i) the word “Indian” (being a geographical indicator) and/or (ii), one the descriptive terms “generic”, “distributor”, “reseller” or “supplier”. The trademark remains the distinctive element in all of the combinations.[ii] Accordingly, Panel finds all six domain names confusingly similar to the trademark.
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The publicly available WHOIS information identifies, in each case, “Mr.Tarun Garg” as the registrant with “SOUTH DELHI PHARMA” organization and so does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. Further, the evidence is that the disputed domain names resolve to websites which promote the sale of pharmaceuticals, display the trademark and which attempt to pass off Respondent as the Complainant or as being a distributor of Complainant.
Panel finds that Complainant has established a prima facie case[iv] and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line 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 site or location.’
Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to the trademark. The requisite likelihood of confusion for the purpose of paragraph 4(b)(iv) is satisfied and the resolving websites sell competitive goods and so exist for commercial gain. Paragraph 4(b)(iv) is satisfied.[v]
Panel finds registration and use in bad faith in respect of all of the disputed domain names. Complainant has therefore established the third and final 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 <genericharvonidistributor.com>, <genericharvonireseller.com>, <genericharvonisupplier.com>, <indianharvonidistributor.com>, <indianharvonireseller.com>, <indianharvonirsupplier.com>, domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 4, 2016
[i] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
[ii] See, for example, Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to the WESTFIELD trademark;
Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) finding <indiaticketmaster.com> confusingly similar to the complainant’s TICKETMASTER mark; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) finding the domain names <caterpillarparts.com> and <caterpillarspares.com> confusingly similar to the registered trademarks CATERPILLAR because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) determining that confusing similarity exist 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; Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark".
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) where the panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
[v] See, for example, Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant; see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
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