Gilead Sciences, Inc. v Owen Ozkan

WIPO Case No. D2025-0024

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Owen Ozkan

Case No. D2025-0024

1. The Parties

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

The Respondent is Owen Ozkan, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <gileadscienceuk.com> (the “Disputed Domain Name”) is registered with

GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2025.
On January 6, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On January 6, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 7,
2025, 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 8, 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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 9, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 29, 2025. The Respondent sent an email communication to the
Center on January 14, 2025. On January 15, 2025, the Center sent an email communication to the Parties
regarding a possible settlement. The Complainant did not request suspension of the proceeding.
Accordingly, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with
Panel Appointment on January 30, 2025.

The Center appointed Mariia Koval as the sole panelist in this matter on February 3, 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

The Complainant, founded in 1987, is one of the largest biopharmaceutical companies in the world. The employs approximately 18,000 individuals worldwide.

Complainant discovers, develops, and commercializes innovative medicines in areas of unmet medical need.
In 2023, the Complainant’s total worldwide revenue was approximately USD 27.1 billion. In 2022, the
The Complainant holds exclusive rights to the GILEAD and GILEAD SCIENCES trademarks (collectively, the
“GILEAD SCIENCES Trademarks”) worldwide, protected by over 230 trademark registrations around the
world, including, but not limited to, the following:

- United States Trademark Registration No. 1611838 for GILEAD SCIENCES, registered on September 4, 1990, in respect of goods in class 5;

- United Kingdom Trademark Registration No. UK00001559231 for GILEAD SCIENCES, registered on October 10, 1995, in respect of goods in class 5; and

- United Kingdom Trademark Registration No. UK00903913167 for GILEAD, registered on November 7, 2005, in respect of goods and services in classes 1, 5, and 42.

The Complainant has built up a considerable online presence and is operating more than 350 domain names which incorporate the GILEAD SCIENCES Trademark, including the domain name <gilead.com>.

The Disputed Domain Name was registered on July 21, 2024. As of the date of this Decision, when
accessed by the Panel, the Disputed Domain Name resolves to a parked page where the Disputed Domain

Name is being offered for sale.

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 done in a typographical error, and the addition of the geographic term “uk”.
Complainant’s GILEAD SCIENCES Trademarks since the Disputed Domain Name reproduces the

page 3

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name in view of the following:

- the Respondent is not associated or affiliated with the Complainant;

- the Complainant has not granted any rights to the Respondent to use the GILEAD SCIENCES
Trademarks, whether a license to sell any products or offer any services, or any rights to register the
Disputed Domain Name;
- the Respondent’s strategy for registering the Disputed Domain Name to capture and divert Internet
search engine queries made by individuals seeking the Complainant’s genuine pharmaceutical products is
clear on its face based on the registration of the Disputed Domain Name containing the entirety of the
GILEAD SCIENCES Trademarks;

- the Complainant’s GILEAD SCIENCES Trademarks are so well known and recognized that there can be no legitimate use by the Respondent; and

- the Respondent’s registration of the Disputed Domain Name can be seen for no other purpose than wrongfully diverting traffic.

The Complainant further claims that the Respondent has registered and is using the Disputed Domain Name in bad faith:

- the Disputed Domain Name consists solely of GILEAD SCIENCES Trademarks without the final letter

“s” and with the name of one of the countries where the Complainant routinely conducts business. The the Respondent was affiliated or associated with the Complainant’s offices in the United Kingdom;

- the Respondent used a privacy shield when registering the Disputed Domain Name;

- the Respondent had constructive knowledge of the Complainant’s GILEAD SCIENCES Trademarks

and its rights due to the Complainant’s longstanding worldwide trademark registrations.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant to succeed must satisfy the panel that:

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

complainant has rights;

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

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

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 Disputed Domain Name completely reproduces the Complainant’s GILEAD SCIENCES Trademarks, with omission of the last letter “s”, and in combination with geographical abbreviation “uk”, and the gTLD “.com”. According to the WIPO Overview 3.0, section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,

page 4

meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In this
case, the omission of the last letter “s” and addition of the country code “uk” to the GILEAD SCIENCES
Trademarks does not prevent a finding of confusing similarity.

According to the WIPO Overview 3.0, section 1.11, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s

GILEAD SCIENCES Trademarks pursuant to paragraph 4(a)(i) of the Policy.

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.

According to the Complainant it has not licensed or otherwise permitted the Respondent to use its GILEAD
SCIENCES Trademarks or to register the Disputed Domain Name which is confusingly similar to the GILEAD
SCIENCES Trademarks. There is also no evidence that the Respondent is commonly known by the
Disputed Domain Name.

The Panel is of opinion that there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods or services or making a legitimate noncommercial or fair use. On the contrary, as at the dates of filing of the Complaint and this Decision the Disputed Domain Name resolves to a parking page of the Registrar offering the Disputed Domain Name for sale.

Moreover, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The addition of the term “uk”, which is the two-letter country code for the United Kingdom, where the Complainant

has a place for its business and has a website in the English language tailored to British customers, to the Complainant’s GILEAD SCIENCES Trademarks in the Disputed Domain Name, is further evidence that the Respondent was very well aware of the Complainant’s GILEAD SCIENCES Trademarks and business at the

time of registration of the Disputed Domain Name and has done so for the only purpose of creating an impression that the Disputed Domain Name is connected with the Complainant’s GILEAD SCIENCES Trademarks.

The Respondent did not respond to the Complainant’s contentions. The Respondent sent a communication to the Center on January 14, 2025, stating “I consent to transfer or cancel the subject domain”. As such, the

page 5

Respondent did not present any evidence for supporting any rights or legitimate interests in the Disputed
Domain Name.

In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy.

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 present case, the Panel comes to the conclusion that the Disputed Domain Name was registered and is being used in bad faith in view of the following. The Complainant obtained the registration of the GILEAD SCIENCES Trademarks more than 35 years before the Respondent registered the Disputed Domain Name in 2024. Taking into account all circumstances of this case, the Panel finds that the Respondent was very

well aware of the Complainant’s business and its GILEAD SCIENCES Trademarks when registering the
confusingly similar Disputed Domain Name that completely incorporates the Complainant’s GILEAD
SCIENCES Trademarks, omitting only the last “s”. The Panel considers it is obvious bad faith that the
Respondent deliberately chose the Disputed Domain Name to create a likelihood of confusion with the
Complainant’s GILEAD SCIENCES Trademarks, so as to create a false association or affiliation with the
Complainant.

The Panel is also of the opinion that it is clear that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the Complainant’s GILEAD SCIENCES Trademarks, intended to disrupt the Complainant’s business and confuse Internet users seeking for or expecting the Complainant’s website. In view of the absence of any evidence to the contrary, the Panel concludes that the Respondent

has registered and is using the Disputed Domain Name in bad faith.

Moreover, there are other indicia of bad faith use here. The Disputed Domain Name currently resolves to the
parking page advertising the Disputed Domain Name for sale through the Registrar. Such use of the
Disputed Domain Name by the Respondent evidences bad faith registration and use.

Furthermore, the underlying beneficial registrant’s use of a proxy service to obscure its true identity further evidences bad faith registration and use of the Disputed Domain Name. In accordance with section 3.6 of the WIPO Overview 3.0, there are recognized legitimate uses of privacy and proxy registration services; the

circumstances in which such services are used, including whether the respondent is operating a commercial
and trademark-abusive website, can however impact a panel’s assessment of bad faith. The Panel
considers that, taking into account all circumstances of this case, the Respondent’s use of privacy service

also constitutes further evidence of bad faith registration and use of the Disputed Domain Name.

In light of the above, the Panel finds the third element of the Policy has been established.

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 <gileadscienceuk.com> be transferred to the Complainant.

/Mariia Koval/ Mariia Koval Sole Panelist Date: February 17, 2025