Gilead Sciences, Inc. v Cong Truong

WIPO Case No. D2025-0008

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Cong Truong

Case No. D2025-0008

1. The Parties

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

The Respondent is Cong Truong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <gileadsciencesinca.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2025. amendment to the Complaint on January 13, 2025.

On January 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 3, 2025, 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 (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on January 11, 2025, providing the registrant and contact information disclosed by the
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 16, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 5, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 11, 2025.

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The Center appointed Federica Togo as the sole panelist in this matter on February 18, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

It results from the Complainant’s undisputed allegations that it was founded in 1987 in Foster City, California, and is one of the largest biopharmaceutical companies in the world, employing approximately 18,000 individuals worldwide. The Complainant discovers, develops and commercializes innovative medicines in areas of unmet medical need. It develops, manufactures, and offers for sale over 25 pharmaceutical products, including BIKTARVY, EPCLUSA, HARVONI, and TRUVADA. It sells products which prevent and treat HIV infection and products which treat hepatitis C.

The Complainant is the registered owner of several trademarks worldwide for GILEAD and GILEAD registered on June 12, 2007, for goods in class 5.
SCIENCES, e.g., United States trademark registration No. 1,611,838, GILEAD SCIENCES, registered on

In addition, it owns and uses the domain name <gilead.com>, registered on May 27, 1995, in connection with its pharmaceutical products and related medical services.

The disputed domain name was registered on September 19, 2024. Furthermore, the undisputed evidence
provided by the Complainant proves that the disputed domain name resolved to a parking page displaying

Pay-Per-Click (“PPC”) links in the Complainant’s area of activity.

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
Complainant’s trademarks since it contains the Complainant’s well known and famous GILEAD and GILEAD
SCIENCES trademarks. The addition of the geographically descriptive term “in CA” contributes to the
confusing similarity between the Complainant’s trademarks and the disputed domain name, as the
Complainant’s corporate headquarters are located in California.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not associated or affiliated with the Complainant. The Complainant has not granted any rights to the Respondent to use the GILEAD or GILEAD SCIENCES marks, whether a license to sell any products or offer any services, or any rights to register the disputed domain name. The Complainant’s mark is so well known and recognized that there can be no legitimate use by the Respondent.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, when viewing the totality of the circumstances, the following acts by the Respondent demonstrate bad faith use and registration: 1) the intentional registration of a domain name consisting solely of GILEAD and GILEAD SCIENCES trademarks with the state in which the Complainant is headquartered; 2) purposefully registering a domain name with search terms to divert Internet users; 3) use of a privacy shield; and 4) registering a domain name incorporating the Complainant’s trademarks without any legitimate use. At the very least, the Respondent had constructive knowledge of the Complainant’s

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trademarks and its rights due to the Complainant’s longstanding worldwide trademark registrations covering the GILEAD and GILEAD SCIENCES marks. The Respondent is fully aware of the Complainant’s business, as well as its goodwill in the GILEAD and GILEAD SCIENCES marks in the healthcare industry and

registered the disputed domain name in bad faith. The Respondent’s inclusion of the geographically descriptive term “in CA” was clearly meant to lead consumers into believing that the Respondent was affiliated or associated with the Complainant’s corporate headquarters in Foster City, California.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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 trademark 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 trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

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

Although the addition of other terms here “in” and “ca”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the marks GILEAD SCIENCES and GILEAD for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

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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 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.

Furthermore, it results from the undisputed evidence before the Panel that the disputed domain name resolves to a parking website comprising PPC links that compete with or capitalize on the reputation and goodwill of the Complainant’s trademark or otherwise mislead Internet users (i.e., a parking page displaying PPC links in the Complainant’s area of activity). Prior UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent bona fide offering of goods or services, where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0 at section 2.9, with further references). This Panel shares this view. Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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.

One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

In the present case, the Panel notes that it results from the Complainant’s documented allegations that the registered the disputed domain name.

disputed domain name resolves to a parking page displaying PPC links in the Complainant’s area of activity.
For the Panel, it is therefore most likely that the Respondent positively knew the Complainant’s mark.
Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the

By the time the disputed domain name was registered, the panel considers it to be unlikely that the Respondent did not have knowledge of the Complainant and its marks, which are entirely included in the disputed domain name, and which have been existing by many years at the time the disputed domain name was registered.

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.

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In this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the Panel’s findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the nature of the disputed domain name (wholly incorporating the Complainant’s trademarks);
(ii) the content of the website to which the disputed domain name directs (i.e., a parking page displaying PPC
links in the Complainant’s area of activity);
(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of
the disputed domain name; and

(iv) the Respondent concealing its identity through a privacy service.

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

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 <gileadsciencesinca.shop> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: March 4, 2025