Gilead Sciences, Inc. v Camila Dieguez

WIPO Case No. D2024-5299

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Camila Dieguez

Case No. D2024-5299

1. The Parties

The Complainant is Gilead Sciences, Inc., United States of America (“US”), internally represented.

The Respondent is Camila Dieguez, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <gileadsci.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2024. On December 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 2, 2025.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 26, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 27, 2025.

The Center appointed Rebecca Slater as the sole panelist in this matter on January 30, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

7.

4. Factual Background

The Complainant is a multinational biopharmaceutical company headquartered in the US. It was founded in 1987. The Complainant develops, manufactures and sells over 25 pharmaceutical products, including products which prevent and treat HIV infection and products which cure hepatitis C. It employs over 20,000 people worldwide. The Complainant’s total worldwide turnover in 2023 was approximately USD 27 billion.

Registration No. 3,251,595 for GILEAD (word mark, registered June 12, 2007), European Union Trade Mark	The Complainant has a portfolio of registrations for the GILEAD trade mark, including: US Trade Mark No. 816124 for GILEAD (word mark, registered February 21, 1996). The Complainant also has a number of registrations for the GILEAD SCIENCES word mark, e.g. US Trade Mark Registration No. 1611838 (stylized mark, registered September 4, 1990). These marks will be collectively referred to as the “Trade Marks”.
The Complainant is the registrant of a significant number of domain names (over 350) which incorporate one or both of the Trade Marks, including <gilead.com> (registered May 27, 1995).
The Respondent is an individual named Camila Dieguez apparently located in the UK. The Respondent did not submit a response, and consequently little information is known about the Respondent.
The Respondent registered the disputed domain name on August 21, 2021.
The disputed domain name currently resolves to a Registrar parking page which offers the domain name for sale and displays click-through links. The Complainant has provided historical evidence of the page offering the disputed domain name for sale and displaying click-through links which referenced the Complainant (e.g. “Gilead Sciences Dividend”).
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that:
-	The disputed domain name is confusingly similar to the GILEAD trade mark. The disputed domain

name incorporates the entirety of the GILEAD trade mark followed by the descriptive term “sci”, which is
closely associated with the Complainant’s business (as an abbreviation of “sciences”). The disputed domain
name is also confusingly similar to the GILEAD SCIENCES trade mark.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not associated or affiliated with the Complainant. The Complainant has not granted the Respondent any rights to use the Trade Marks. The Trade Marks are so well known that there can be no legitimate use by the Respondent. The disputed domain name has been registered to wrongfully divert traffic for the Respondent’s commercial gain.

- The Respondent was fully aware of the Complainant’s business and its goodwill in the Trade Marks

and registered the disputed domain name in bad faith. The inclusion of a term that refers to the
Complainant’s field of activity (i.e., “sci”) evidences targeting of the Complainant. Alternatively, the

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Respondent, as a minimum, would have had constructive knowledge of the Trade Marks when it registered the disputed domain name. The Respondent has also used a privacy shield.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements enumerated in paragraph 4(a) of the
Policy have been satisfied, namely:

- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the GILEAD trade mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the GILEAD trade mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

Although the addition of other terms (here, “sci”) may bear on assessment of the second and third elements, the Panel finds the addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the GILEAD trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

For completeness, the Panel also finds the dominant feature of the GILEAD SCIENCES trade mark is recognizable within the disputed domain name (with “sci” being an abbreviation of “sciences”). Accordingly, the disputed domain name is also confusingly similar to the GILEAD SCIENCES trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

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of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that the composition of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. The Complainant has not authorized the Respondent to use the Trade Marks and there is no evidence that the Respondent has ever been commonly known by the disputed domain name. UDRP panels have found that the use of a domain name to host a parked page comprising click- through links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Under paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where a respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

The Panel finds it highly unlikely that the disputed domain name was registered without knowledge of the Complainant and the Trade Marks, given the significant worldwide reputation of the Complainant and composition of the disputed domain name. The Respondent’s goal in registering and using the disputed domain name appears to be to attract Internet users by taking unfair advantage of and creating a likelihood of confusion with the Complainant’s well-known Trade Marks. This finding is reinforced by the Respondent’s use of the disputed domain name to host a website displaying click-through links which referenced the Complainant and likely generate revenue for the Respondent. This amounts to “opportunistic bad faith” in violation of the Policy.

In the circumstances, the use of a privacy service further supports an inference of bad faith. WIPO Overview

3.0, section 3.6.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gileadsci.com> be transferred to the Complainant.

/Rebecca Slater/
Rebecca Slater
Sole Panelist
Date: February 4, 2025