Gilead Sciences, Inc. v Kyoung S Park

WIPO Case No. D2025-0006

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Kyoung S Park.

Case No. D2025-0006

1. The Parties

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

The Respondent is Kyoung S Park., Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <gileadsciences.net> is registered with TurnCommerce, Inc. DBA

NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2025. connection with the disputed domain name. On January 3, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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.

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

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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
SCIENCES, e.g., United States trademark registration No. 3,251,595, GILEAD, registered on June 12, 2007,
for goods in class 5; United States trademark registration No. 1,611,838, GILEAD SCIENCES, registered on
September 4, 1990, for goods in class 5.

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 December 19, 2014. In addition, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a webpage with a number of third-party links relating to various categories. At the bottom of the webpage, the disputed domain name is offered for sale for USD 4,400.

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 identical/confusingly similar to the
Complainant’s trademarks since it contains the Complainant’s well known and famous GILEAD and GILEAD
SCIENCES trademarks and merely adds the Top-Level Domain (“TLD”) “.net”.

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; 2) offering to sell the disputed domain name for USD 4,400, accompanied by a link to complete the purchase; and 3) purposefully registering a domain name with search terms to divert Internet users. At the very least, the Respondent had constructive knowledge of the Complainant’s trademarks and its rights due to its 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.

B. Respondent

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

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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 and GILEAD SCIENCES are reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark GILEAD SCIENCES 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 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.

Moreover, the Panel notes that the nature of the disputed domain name carries a high risk of implied affiliation, since the disputed domain name is identical to the Complainant’s trademark GILEAD SCIENCES and that the trademark GILEAD SCIENCES is not a combination of terms that one would legitimately adopt

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as a domain name unless to suggest an affiliation with the Complainant. Generally speaking, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). The Panel shares this view.

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.

In the Panel’s view, the Respondent has intentionally registered the disputed domain name which identically contains the Complainant’s trademark GILEAD SCIENCES. 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 is identically included in the disputed domain name, and which has been existing by many years at the time the disputed domain name was registered.

In the present case, the Panel notes that the evidence indicates that the Respondent most likely has registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration likely to be in excess of the documented out-of-pocket costs directly related to the disputed domain name. According to the Complainant’s uncontested allegations, the Respondent has offered the disputed domain name for sale for USD 4,400. This Panel finds that this sum is likely to be in excess of any out-of-pocket costs directly related to the disputed domain name (see Tosara Pharma Limited v. Super Privacy Service LTD c/o Dynadot / zuhal topuz, WIPO Case No. D2021-4062).

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.

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 (identical to the Complainant’s GILEAD SCIENCES trademark); (ii) the content of the website to which the disputed domain name directs (resolving to a webpage with third party links in which amongst others the disputed domain name is offered for sale for USD 4,400); and

(iii) absence of rights or legitimate interests coupled with no response for the Respondent’s choice of the

disputed domain name.

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 <gileadsciences.net> be transferred to the Complainant.

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