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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gilead Sciences, Inc. v. Kumar Patel

Case No. D2005-0831

 

1. The Parties

The Complainant is Gilead Sciences, Inc., Foster City, California, United States of America, represented by Foley & Lardner, Los Angeles, California, United States of America.

The Respondent is Kumar Patel, Wisbech, Cambs, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <gilead-sciences.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2005. On August 3, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 4, 2005, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2005. The Response was filed with the Center on September 11, 2005.

The Center appointed Ross Carson as the sole panelist in this matter on October 5, 2005. 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.

In an e-mail dated September 16, 2005, Respondent advised the Center that he had filed a court case against Complainant regarding this matter. By e-mail dated September 28, 2005, the Center requested Respondent to provide the Center with evidence of the details of such court case. The Center advised Respondent of paragraph 18(a) of the Rules, which states “18, Effect of Court Proceedings. (a) In the event of any legal proceedings initiated prior to or during administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. Respondent advised the Center by e-mail dated September 28, 2005, that the court case has been filed in the United Kingdom High Court. Respondent advised the Center that he was still awaiting receipt of the document sealed by the Court. Following the appointment of the Panel, the Center issued an order to Respondent on October 11, 2005, requesting Respondent to provide the Center with evidence of the details of the court case so that the Panel may consider the effect of such court proceedings under the Rules, paragraph 18(a). By e-mail dated October 13, 2005, Respondent forwarded a document from the Royal Courts of Justice, Chancery Division, entitled a Claim Form. The Claim Form named the Respondent as Claimant and the Complainant as Defendant. Particulars of the Claim are as follows:

“The Defendant has made a complaint to the World Intellectual Property Organization (WIPO) regarding my domain name <gilead-sciences.com>. The said domain name resolves at a non-commercial free speech website and the Defendant has used the Icann UDRP policy in bad faith and has made false statements, in a deliberate attempt to fraudulently obtain, reverse hijack my domain name and to gag the public’s right to freedom of expression. Not only has the Defendant participated in fraudulent activity but the Defendant’s actions also contravene section 12 of the Human Rights Act 1998 and article 10 and 11 of European Convention for Protection of Human Rights and Fundamental Freedoms.

I claim an amount of 17,000 pounds from the Defendant which includes administrative costs, research, preparation of response to WIPO, including preparation of exhibits and associated costs.

I also claim damages plus costs in the case.

In addition, the Claimant claims interest at the rate of 8% per annum from August 5, 2005, up to date of judgment or sooner payment.”

The Panel has not been advised by the parties if the court case is or is not proceeding.

Neither party requested the Panel to suspend this proceeding. As the Panel has no jurisdiction with respect to the issues raised before the High Court, the Panel decides pursuant to paragraph 18 of the Rules to proceed to a decision.

By e-mail dated October 7, 2005, Complainant requested permission and authorization to file a further statement relating to matters raised in the Complaint. After considering the Complainant’s request the Panel issued an order permitting the Complainant to file evidence and documents relating to certain issues by October 24, 2005. The Respondent was granted the right to file further statements and documents in reply to Complainant’s submissions and evidence by November 3, 2005. Both the Complainant and Respondent filed additional submissions and documents.

 

4. Factual Background

Complainant is a global biopharmaceutical company which develops and markets products for the treatment of HIV, Hepatitis B, Cytomegalovirus, fungal infections and influenza. The Complainant began operating in the United States under the name Gilead Sciences, Inc. in June 1987. Since commencement of operations, the Complainant has grown into a US$1.3B company with over 1600 employees in 11 countries including the United States, United Kingdom, Ireland, France, Greece, Portugal, Spain, Australia, Italy and Germany. Complainant markets, distributes and sells its biopharmaceutical products throughout the world. Complainant’s total revenues from sales in the first quarter of 2005 were US $430.4M.

In 1990, Complainant established a sales marketing and clinical development unit in Cambridge, United Kingdom. (See Declaration of Alton, in support of the Complaint, paragraphs 1 to 8)

Complainant is the owner of trademark registrations for GILEAD SCIENCES in over 40 countries. The trademarks are registered in relation to pharmaceutical products and/or scientific research services. Particulars of United Kingdom Registration No. B 1559231 for the trademark GILEAD SCIENCES, registered in relation to “pharmaceutical preparations and substances…”on November 10, 1995 is marked as Exhibit A to the Declaration of Alton. Particulars of United States Trademark Registration No. 1,6ll,838 for the trademark GILEAD SCIENCES, registered in relation to “pharmaceutical preparations for the treatment of viral diseases, such as aids, herpes, and human papilloma virus, and cancer for professional medical use was registered on September 4, 1990, is marked as Exhibit B to the Declaration of Alton.

Complainant is also the registered owner of over 40 trademark registrations for GILEAD registered in over 40 countries throughout the world in relation to pharmaceutical preparations. (Paragraph 12, Alton Declaration).

Complainant also owns trademark registrations and applications for the trademark GILEAD Leaf and Shield Logo and uses such trademarks throughout the world. (Paragraph 14, Alton Declaration). The Complainant is the owner of numerous trademark registrations and applications for brand names of products, namely; HEPSERA, TRUVADA, EMTRIVA, VIREAD, AMBISOME, VISTIDE and TAMIFLU in over 40 countries.

 

5. Parties’ Contentions

A. Complainant

Respondent’s Website Home Page

Complainant submits that the homepage of Respondent’s website “www.gilead-sciences.com” went through four versions between the early part of June 2005 and the fourth version of the homepage generated on June 30, 2005. Declaration of Alton, paragraphs 21 to 24.

The fourth version of the homepage of the website is attached as Exhibit D to the Declaration of Alton. At the top of the new website, Respondent has inserted four hyperlinked buttons labeled i) HOME, ii) GREED, iii) FORUM, iv) CONTACT. The first button returns the visitor to the main site, the second to a page with three paragraphs of text, the third is not operational and the fourth lists three e-mail addresses to contact as follows:

If you have a comment or suggestion for us, please email details to:

[e-mail address]@GILEAD-Sciences.com.

If you have a story about Gilead Sciences Inc, please email:

[e-mail address]@Gilead-Sciences.com.

For stories or complaints regarding other pharmaceutical companies, please email: [Respondent’s e-mail address].

At the top right hand corner of the webpage is a scroll bar where a number of Complainant’s brand trademarks for Complainant’s pharmaceuticals appear as a scrolling image one after another. These brand name trademarks, many of which are registered, are for the pharmaceuticals: TRUVADA, EMTRIVA, VIREAD, AMBISOME, VISTIDE and TAMIFLU.

Prominently displayed below the four hyperlinked buttons referred to above is GILEAD Leaf and Shield Logo and the Gilead Sciences Inc. slogan: “Advancing Therapeutics. Improving Lives.” The word ‘GILEAD’ is a prominent part of the logo. A ribbon extending from the label states: “This is the logo of Gilead Sciences Inc.”

Below the scrolling image of Complainant’s brand names, in very small text, the following message appears: “NOTICE This is not the website of Gilead Sciences Inc, nor is it endorsed by them, or affiliated with them in any way. The website of Gilead Sciences inc. can be found at Gilead.com.” The middle of the webpage includes a blank space with the words “company contacts” appearing at the top righthand side of the blank box. Towards the bottom of the page, Respondent makes use of three images and inactive hyperlinked words as follows: Public Scrutiny, Adverse Reactions, and Brand Lawsuits.

Under the inactive hyperlink ‘Public Scrutiny’ in fine print is the following: “A forum in which to chat and share information about the company. Are you an investor, an employee, or have you had a problem with the company or any of their products? Tell us about it here.” Under the inactive hyperlink ‘Adverse Reactions’ in fine print is the following: “Information regarding adverse reactions to Gilead’s products, including clinical trials.” Under the inactive hyperlink ‘Brand Lawsuits’ in fine print is the following: “Looking to sue the company? Find out if others have brought a similar case against Gilead.” Finally, in an even smaller font at the bottom of the page, the following message appears: “Disclaimer: This website observes fair use of the name “Gilead Sciences” and the logo of Gilead Sciences. This website is not affiliated with Gilead Sciences Inc in any way and should not be confused with the website of Gilead Sciences Inc, which can be found at Gilead.com.”

Identical or Confusingly Similar

Complainant submits that its trademarks GILEAD SCIENCES, GILEAD and GILEAD Leaf and Shield logo are famous in the pharmaceutical field throughout the world as a result of Complainant’s extensive use and promotion of its goods and services in association with its registered trademarks for or including GILEAD reviewed in paragraph 4 immediately above.

The Complainant submits that the domain name <gilead-sciences.com> is identical or confusingly similar to the Complainant’s trademarks for or including GILEAD SCIENCES.

Complainant further submits, as previously held by other UDRP panels, the mere inclusion of a hyphen does not alter a finding that the mark and a domain name are identical or confusingly similar. See e.g., Fort Knox National Company v. Ekaterina Phillip ova, WIPO Case No. D2004-0281 (“…including a hyphen between the words true and pay does not make a sufficient difference between the domain name and the Complainant’s trademark.”); see also Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 (“…clearly the Domain Name, featuring as it does the name TRIODOS BANK separated by a hyphen and followed by the generic .com suffix, is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights.”).

Respondent Has No Rights Or Legitimate Interests In The Domain Name In Dispute

Complainant submits that as a result of extensive use of the trademarks for GILEAD SCIENCES throughout the world for many years the Complainant’s GILEAD SCIENCES trademarks are famous in relation to pharmaceuticals. Further, Complainant submits that Respondent’s use of the identical or confusingly similar domain name in dispute is an infringement of Complainant’s trademarks and therefore cannot be a bona fide offering of goods or services.

Complainant states that Respondent consciously selected, registered and is using the domain name in dispute knowing, indeed intending, that some Internet users seeking to find Complainant’s website will instead be tricked and mistakenly diverted to Respondent’s site. See Paxton Herald v.Truth Squad, National Arbitration Forum, FA 114766. Once the Internet user has clicked or typed-in the domain name in dispute, it is not even immediately clear that they are not actually visiting Complainant’s website. This is true even if Respondent did not use Complainant’s corporate logo so prevalently across the page – which he does. It is only after the individual has been unknowingly diverted to the site, examined the home page closely, and read the majority of its contents, that the person may realize they are not on Complainant’s site. Once Respondent’s improper use of the mark has drawn these individuals to the site through this “initial interest confusion”, the goal of misdirection and diversion has already been achieved. See AltaVista Co. v. Altavisa, National Arbitration Forum, FA95480. In the event that these individuals determine they were mistaken in their assumption, they might continue searching for Complainant’s website, or could even presume that Complainant does not have a website and discontinue their search efforts altogether. Alternatively, the visitor could fail to realize that they have been misdirected and believe they have actually located Complainant’s website, then click on the ‘Contact’ link, send an email to [e-mail address]@gilead-sciences.com, all the while believing they had communicated with Complainant. This result greatly jeopardizes Complainant’s ability to monitor and receive communications from consumers seeking to report any potentially adverse events relating to the use of Complainant’s products.

Respondent has no legitimate rights or interests in the domain name in dispute under paragraph 4(c) of the Policy.

Paragraph 4(c)(i)

Complainant submits that Respondent’s registration and use of the Domain Name is clearly aimed at diverting traffic otherwise intended for Complainant’s website by means of such initial interest confusion. As such, Respondent cannot establish legitimacy under paragraph 4(c)(i) of the Policy since such an infringing use is not bona fide.

Paragraph 4(c)(ii)

Complainant states that it has not authorized Respondent to use the mark GILEAD SCIENCES, and that Respondent is not an authorized dealer, distributor, or licensee of Complainant. (Alton Declaration, page 9, paragraph 2.) Moreover, to the best of Complainant’s knowledge, Respondent has never held himself out as Gilead-Sciences, is not otherwise known as Gilead-Sciences, does not use Gilead-Sciences in business, and has not operated any business, social, charitable organization, or other entity utilizing the name. Accordingly, Respondent cannot demonstrate rights or legitimate interests to the domain name under paragraph 4(c)(ii) of the Policy.

Paragraph 4(c)(iii)

Complainant submits that a necessary element under paragraph 4(c)(iii) of the Policy requires that the domain name in dispute not be used to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant submits that the Respondent registered and used the Domain Name with the intent to misleadingly divert traffic destined for Complainant’s website by means of initial interest confusion and cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.

Freedom of Speech Does Not Allow for the Registration of a Domain Name Confusingly Similar to Another Mark

Complainant submits the use of Complainant’s trademarks to unfairly and deceptively attract and “misleadingly divert” traffic to Respondent’s website violates the Policy and Complainant’s established worldwide trademark rights. Respondent’s use of Complainant’s mark as the domain name for his website is more analogous to source identification than to a communicative message. The domain name identifies the website as being that of Complainant. Free speech rights do not extend to labeling or advertising products in a manner that conflicts with the trademark rights of others. Paxton Herald v. Truth Squad, National Arbitration Forum, FA114766.

Complainant further submits that numerous other WIPO and NAF panels alike have declared, while laws and policies protective of free speech may allow a trademark to be used in the content of a website, these laws and policies do not permit the use of a trademark as a domain name. Covance, Inc. and Covance Laboratories Ltd. v. The Convance Campaign, WIPO Case No. D2004-0206 (finding that a domain name which is identical to a complainant’s trademark does not qualify as either a bona fide offering under paragraph 4(c)(i) of the Policy, or a ‘legitimate noncommercial or fair use’ under paragraph 4(c)(iii) regardless of website content).

Complainant also submits that the Policy does not permit the use of a mark of another as a domain name, even where a respondent has a website that is purely commentary or opinionated in nature. See The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072. (“Even if the site at newyorktimes.com were purely a commentary or opinion site, [respondent] would not be entitled to use THE NEW YORK TIMES mark in the domain name.”).

Complainant states that other panels have even concluded that the website content is immaterial if the domain name is identical to the complainant’s trademark. See Convance, Inc. (supra), (“a domain name which is identical to the Complainant’s trademark should necessarily not qualify as a ‘legitimate noncommercial or fair use’ under paragraph 4(c)(iii) regardless of website content.”) Even though an individual may have the right (1) to establish a commentary or opinion site regarding a company, and (2) to mention the company’s mark on the site, a respondent is not entitled to use the mark as the address for such a website. See The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072; see also E. & J.Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

Complainant submits that in a case comparing United States First Amendment freedom of speech with “The European Approach” to freedom of speech, the panel indicated, “[while] Respondent may be free publicly to comment on the Internet in respect of the Complainant’s vehicle retail services, such freedom does not confer a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trademark”. Arnold Clark Automobiles Limited v.Thomas (aka Tam) Coughlan, WIPO Case No. D2002-0909. Thus, regardless of the basis for any anticipated freedom of speech defense (e.g., United States’ or European laws). Respondent in this case cannot establish legitimate or fair use by appealing to paragraph 4(c)(iii) of the Policy.

Disclaimer

Complainant submits that, even if the disclaimers were prominent, the use of a disclaimer does not absolve Respondent from liability for the initial confusion caused by use of the Complainant’s mark in the domain name in dispute.

Demonstration of Rights or Legitimate Interests Not Included in Paragraphs 4(c)(i), 4(c)(ii) or 4(c)(iii) of the Policy.

Complainant acknowledges that paragraph 4(c) of the Policy is not limiting and a respondent may rely on other circumstances to establish rights or legitimate interests. However, Complainant submits that significant policy requirements require open channels of communication between drug manufacturers and the public for reporting adverse reaction to drugs. The use of a domain name confusingly similar to Complainant’s contact information creates confusion and jeopardizes communication links between consumers and Complainant.

Registered and Used in Bad Faith

Complainant states that paragraph 4(b) of the Policy is without limitation and other circumstances than those enumerated in paragraph 4(b) may constitute registration and use in bad faith.

Complainant states that prior to registration of the domain name in dispute the Respondent was aware of the Complainant’s well known trademarks. By registering the domain name in dispute, the Registrant knew and clearly intended that some Internet users seeking to find Complainant’s website would be mistakenly diverted to Respondent’s “www.gilead-sciences.com” website. Registration and use under such circumstances constitutes bad faith under the Policy.

Complainant relies on paragraph 4(b)(iii) of the Policy and submits that the Policy very clearly prohibits damage and disruption to others, especially where domain names will mislead Internet users to a complainant’s website. The Complainant submits that paragraph 4(b)(iii) of the Policy is not limited to competitors. E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; see also Jenner & Block LLC v. Defaultdata.com, National Arbitration Forum, FA117310. (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive, but is no more correct than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address”).

False Contact Information Shows Bad Faith

Complainant submits that providing false Whois contact information establishes a presumption of bad faith registration.

Complainant submits on information and belief, (Alton Declaration, paragraph 28), that the Whois information Respondent submitted when registering the domain name in dispute is false. Complainant was unable to identify the phone number and address through Internet searches. An independent investigator in the United Kingdom retained by Complainant was unable to locate Kumar Patel or K. Patel anywhere in the Wisbech area where Respondent purports to be located. The independent investigators in the United Kingdom were unable to confirm the existence of the address of “5 Stanborough House” in Wisbech either through the Internet or conventional sources. The Complainant also submits it was advised that the dialing prefix in Respondent’s Whois information, namely 354, does not conform with the dialing prefix typically identified with the Wisbech region, which is 945.

B. Respondent

The Respondent states that the website is a work in progress and has gone through the four versions listed by the Complainant.

The Respondent states that it agrees to most of the Complainant’s description of the Respondent’s website, at that time, which is attached as Exhibit D to the Alton Declaration forming part of Complainant’s submission. The Respondent states that the content of the website is still a work in progress. The disagreement is with respect to the “Greed” page, which the Respondent submits never related to three lines as alleged by the Complainant. That subpage associated with the hyperlink “Greed” bears the heading “Excessive Greed, Corruption, Deceit and Fraud – All Present in the Pharmaceutical Industry”. Immediately below the heading is the sentence “Gilead is part of an industry that puts huge profits before the lives of the very people it develops medicine for. The remainder of the page is directed to alleged greed, corruption, deceit and fraud in the pharmaceutical industry in general.

The Respondent states that the ‘Forum’ link on the homepage has been active for sometime and that the ‘Public Scrutiny’ hyperlink is linked to the ‘Forum Page’.

Respondent further submits that the ‘Contact’ hyperlink resolves to the ‘Contact’ page which includes the following information:

“Complete confidentiality will be given to those not wishing to disclose their identities on the website.

If you do not wish to share your story with others here, but you still need assistance with your problem, you could always try contacting the company, Gilead Sciences Inc, directly if you wish. The CEO is [Mr.] Martin, his e-mail address is: [e-mail address]@Gilead.com.” (See Declaration of Alton, Exhibit D).

Respondent further submits that the word “NOTICE”, in bold text, appears above a statement that this is not a website of Gilead Sciences Inc. Further, the Respondent submits that the notice and disclaimer are in the same size and no smaller than all the other text on the website with the exception of the headings.

Identical or Confusingly Similar

The Respondent submits that a Complainant only has rights in commercial use. These rights do not extend to non-commercial use. As “www.gilead-sciences.com” is a non-commercial free speech website, there is no scope for Complainant’s infringement or “confusingly similar” argument.

Rights and Legitimate Interests

Paragraph 4(c)(i) of the Policy

With respect to paragraph 4(c)(i) of the Policy the Respondent submits that its use of the domain name in dispute is non-commercial.

Paragraph 4(c)(ii) of the Policy

The Respondent agrees that he has not been commonly known by the domain name and has never claimed to be.

Paragraph 4(c)(iii) of the Policy

Paragraph 4(c)(iii) of the Policy states “you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent submits that its use of the domain name in dispute is bona fide.

Respondent submits that the website associated with the domain name in dispute is non-commercial and the Complainant has failed to show any commercial use.

Respondent submits that he has no intention of misleading or diverting consumers or Internet users. Respondent further submits that Internet user would not be confused as to where the domain name resolves and would be well aware the “www.gilead-sciences.com” website is in no way endorsed by the Complainant; it is abundantly clear that the website is not affiliated with the Complainant in any way. The website itself contains not just one, but three, notices on the home page that “this is not the website of Gilead Sciences Inc”, in addition, it even gives the website address of the Complainant, Gilead Sciences Inc (twice) and the Complainant’s CEO email contact details (once on the homepage and once on the contact page). Furthermore, the notice of disassociation is also in the meta tags of Respondent’s website, which search engines use to list websites. (Annex 2 to the Response.) Respondent submits that nobody could choose to visit the website “www.gilead-sciences.com” without first knowing that the website was a criticism site and not in any way endorsed or affiliated with the Complainant. The case cited by the Complainant, themselves, (Hollenbeck Youth Center, Inc. v Stephen Rowland, WIPO Case No. D2004-0032) indeed supports Respondent’s argument in that the panel stated “Protest is only legitimate if the protest is transparent and does not imply an affiliation to the trademark holder”.

Initial Interest Confusion

The Respondent submits that initial interest confusion does not apply to non-commercial websites. The initial interest confusion theory has application only where one’s business use of another’s mark is for its own commercial gain. Profiting financially from initial interest confusion is a key element for imposition of liability under the initial interest confusion theory. Lamparello v. Falwell, Unites States Court of Appeal for the Fourth Circuit. In the Lamparello case the Court states: “Applying the initial interest confusion theory to gripe sites like Lamparello’s would enable the mark holder to insulate himself from criticism – or at least minimize access to it. We have already condemned such uses of the Lanham Act, stating that a mark holder cannot “shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct”. CPC Int’l, 214 F. 3d at 462. The subject of the dispute in the Lamparello case was a gripe site associated with the domain name <fallwell.com>. The Appeal Court cited with approval an article by Hannibal Travis, The Battle for Mindshare: The emerging Consensus that First Amendment Protects Corporate Criticism and Parody on the Internet, 10 Va. J.L. & Tech. 3, 85 (Winter 2005). (“The premise of the “initial interest” confusion cases is that by using the plaintiff’s trademark to divert its customers, the defendant is engaging in the ‘old bait and switch’. But because…internet users who find [gripe sites] are not sold anything, the mark may be ‘bait’, but there is simply no ‘switch’”. The Court of Appeal further stated that “Rather it has long been established that even when alleged infringers use the very marks at issue in titles, courts look to the underlying content to determine whether the titles create a likelihood of confusion as to the source”. (omitted citations)

Tarnishment

The Respondent submits that he is simply informing the general public of facts. Respondent further submits that the facts on the website are reports of Complainant’s own actions. He asserts that if the facts will disrupt their business, then Complainant should not have participated in those actions in the first place.

The Respondent further submits that the content of the website “www.gilead-sciences.com” cannot be characterized as evidencing an intent to tarnish. Classic “tarnishment” is when the content of the mark or domain name is being linked with unwholesome concepts such as illegal drugs, violence or sexual activity. A list of authorities is provided.

Respondent submits that the law permits him to use the domain name in dispute for the purpose of free speech at a non-commercial website. The Respondent relies on the Lamparello case referred to above and a recent UDRP decision Biocryst Pharmaceuticals Inc. v. Kumer Patel, WIPO Case No. D2005-0674.

Disclaimers on Website in Dispute

Respondent recites the disclaimers, notice of disassociation with the Complainant and provision of contact details of Gilead Sciences, Inc. and their current CEO all reviewed above in Respondent’s summation of the homepage associated with the domain name in dispute.

Alleged False Contact Information

Respondent submits that the contact information for the domain name is correct as evidenced by the fact that the two e-mails forwarded by the Center reached the Respondent.

Respondent states that registering domain names for more than one company is evident under the ‘Greed’ section of the website “www.gilead-sciences.com”. See Annex 3 to the Response. Annex 3 commences “Excessive Greed, Corruption, Deceit and Fraud – All Present in the Pharmaceutical Industry!”

Respondent further submits that he is not using the domain name to attract anyone. He is merely using the domain name as a relevant location to discuss/criticize the Complainant and for the general public to be able to share information about the Complainant. Respondent submits that he and others have valid comments to make about the Complainant, and the most appropriate place to do that is at their doorstep, there is not much point in protesting and gathering together miles away from their doorstep. Respondent states he is making a perfectly legitimate and fair use of his domain name as has been clearly evidenced by the recent ruling in Biocryst Pharmaceuticals Inc v Kumar Patel, supra, where the panel found that “The use of the domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to exercise his free speech rights and express his opinion in this way, subject to other laws of course (copyright, fraud, libel, etc.)”.

Reverse Domain Name Hijacking

Respondent submits that Complainant has used the Policy in bad faith to attempt to deprive the Respondent of the domain name in dispute. The Respondent relies on the following grounds in support of reverse domain name hijacking.

1. Complainant falsely stated that its trademark was infringed when Complainant knew that the domain name in dispute was used in association with a non-commercial criticism website. The Respondent relied upon a number of cases including: Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151, where the panel found that “Under these standards, Complainant’s actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainant’s mark was limited to a narrow field, (i.e. Commercial in the instant case) and that Respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complainant, …”

2. Complainant falsely accused Respondent of providing false contact information to the Registrar of the domain name in dispute.

Respondent submits that the Complainant states that they (or their representatives) carried out searches on <192.com>, <mapquest.co.uk> and <streetmap.co. uk> and that there was no evidence to suggest that Respondent’s address of 5 Stanborough House was in Wisbech. Respondent submits that the Complainant omitted to file the search results in order to deliberately mislead the Panel as the search results would indeed prove that Respondent’s contact details are correct.

The Respondent attached, as Annex 4 to the Response, a printout from “www.mapquest.co.uk”. Respondent submits that on the simple search of the postal code, Respondent’s home is pinpointed on the map. Respondent submits that the map discloses the location, the postal code, and verification of Wisbech. Attached as Annex 5 to the Response is a printout of a map generated at “www.streetmap.co.uk”, which Respondent submits shows the location, the postal code and verification of Wisbech. Attached as Annex 6 to the Response is a search conducted at “www.192.com” using the entry ‘PATEL’ and the postal code, which discloses one Pankaj Patel at the postal code, which Respondent submits is his family home.

3. Respondent submits that the Complainant had to know that the Complainant’s trademark was limited to a narrow field and that Respondent’s contact details were correct and that any attempt to prosecute this matter under an UDRP Complaint would be abusive and would constitute reverse domain name “hijacking”.

Complainant’s Supplemental Submission

Complainant submits that the Respondent is an opportunistic cybersquatter who has registered the domain name equivalents of numerous companies across several industries, including Complainant’s famous and widely-registered mark GILEAD SCIENCES.

Complainant attached as evidence to its Supplemental Submission copies of web pages of the following companies from websites developed and owned by Respondent: Genzyme Corporation, H. B. Fuller Co., Hollis-Eden Pharmaceuticals, Invitrogen Corporation, Martek Biosciences, Inc., Perrigo Company, Serono Corporation and Watson Pharmaceuticals. The above referred-to sites include the following elements in common with the earliest version of the Gilead-Sciences webpage (Annex 1 to the Response). The top center of the web page features the logo and house mark of the Company. Immediately below is the statement: [trademark.com] website will in time be the focal point for people to share their bad experiences about either the company or any of their products. You are no longer alone! Share your experiences with others. Below the above statement is a hyperlink (not active): Story @[trademark.com]. Immediately below in smaller and finer print is: “This is not a website of [corporate name], nor is it affiliated with them in any way.”

Complainant also attached as evidence the Whois records for each of the above websites. The Registrant contact for the websites is WhoisGuard. WhoisGuard is a service which prevents people from gaining access to the actual registrant’s name, address, phone number and e-mail.

Complainant submits that based on the above evidence, it is clear that Respondent is the owner of each of the above referred to websites, and in every instance has merely put up the “shell” of a gripe-site in an effort to concoct some form of fair use or freedom of speech defense. Complainant cites The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, finding no fair use and stating “Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainant’s showing of bad faith use and registration”.

The Complainant submits that the panel in the BioCryst decision, on which the Respondent relies, did not have any evidence before him that the Respondent is a cybersquatter who engaged in a pattern of conduct, whereby he registers the domain name equivalents of numerous companies across a variety of industries and then places the “shell” of a gripe-site to support a fair use defense to cybersquatting.

The Complainant submits that the Lamparello decision relied on by the Respondent is one of two lines of decisions. One line of decisions looks to the domain name itself to determine whether the use thereof would create a likelihood of confusion with the complaining parties’ marks. The other line of cases, the “Complaint Site” approach, reviews the underlying website content to determine if it constituted a legitimate gripesite and was not likely to cause confusion.

Complainant submits that even if Lamparello were to control in this dispute, the decision makes clear that it does not apply to those who registered numerous domain names such as the Respondent. Lamparello v. Fallwell, 2005 WL 2030729, No. 04-2011 (4th Cir. August 23, 2005): “Lamparello has not registered ‘multiple domain names’, rather the record indicates he has registered only one. Thus Lamparello’s conduct is not of the suspect variety.”

On the issue of false contact information, Complainant submits that the Respondent has only submitted images showing the search results for city and zip code. When a search is conducted for the address “5 Stanborough House” in the address line of “www.mapquest.co.uk”, search results indicate “address not found”. See search results attached to Complainant’s Supplemental Submission. Even if “5 Stanborough House” does exist, Respondent has not filed any evidence to support a finding that he resides there.

Respondent’s Supplemental Submission

Respondent submits that many of his websites are still in the early stages of development due to Respondent’s time being taken up with several complaints. Other websites are more developed having been developed before the Respondent became involved in responding to complaints.

Respondent quotes the nine non-exhaustive factors set out in the United States Anti-Cybersquatting Consumer Protection Act, which are to be considered to distinguish abusive domain name registrations from legitimate ones. The issues in the Lamarello case related to infringement and dilution under the Lanham Act and cybersquatting under the Anti-Cybersquatting Consumer Protection Act. The Respondent then provided his view of the application of the nine criteria to his view of the facts in this case.

Respondent submits that although the Lamarello decision mentioned that multiple domain name registrations could, on the face of it, be seen as “suspect”, suspect does not mean that a registrant is guilty of such conduct. Respondent states that although he has many criticism websites, there is no evidence that he has offered to sell any of the criticism trademark TLD domain names or has diverted any traffic using the domain names.

Respondent, in reply to Complainant’s submission that the panel in the Biocryst Pharmaceutical case had no evidence of registration of multiple domain names corresponding to some well known trademarks, states that the panel was advised by the Respondent himself that he has registered several other domain names that incorporate marks of other pharmaceutical companies. Based on the evidence before it, the panel in Biocryst Pharmaceutical found “…that the admission by the Respondent on its own is not sufficient to establish bad faith”.

Respondent submits that there are instances where he has a website with domain names which, on the face of it, do not appear to be associated with the pharmaceutical industry, but still have some connection. The Respondent refers to an arbitration by Eastman Chemical Inc., which went against him.

With respect to the allegation of false contact details, the Respondent states that it is not his responsibility to prove who he is or where he lives. Respondent submits that the Complainant has made certain allegations relating to false contact information and it is Complainant’s responsibility to prove these allegations are true.

As a final point, the Respondent referred to a decision handed down on the previous day (November 2, 2005) regarding <eastmanchemicalco.com>, which went against the Respondent (see Eastman Chemical Company v. Kumar Patel, National Arbitration Forum, FA561094). The Respondent submits that the decision was based on facts not supported by the evidence.

 

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 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

A. Identical or Confusingly Similar

Complainant has established that it has registered trademarks for GILEAD SCIENCES in many countries throughout the world for use in relation to chemicals, pharmaceutical products and/or scientific research services. The Complainant started in business in 1987 and currently has over 1,600 employees in 11 countries around the world. The Complainant’s products which treat life threatening diseases, such as HIV are sold throughout the world.

The domain name in dispute is <gilead-sciences.com>. The mere inclusion of a hyphen between the words GILEAD and SCIENCES does not make a sufficient difference between the Complainant’s registered trademarks and the domain name in dispute. (Tridos Bank N V. v. Ashley Dobbs, WIPO Case No. D2002-0776. The addition of the generic top-level domain (gTLD) “.com” is without significance as it is required of domain name registrants. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

The Panel finds that the domain name in dispute is confusingly similar to the Complainant’s registered trademark GILEAD SCIENCES. Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) 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 trademark or service mark at issue.

The circumstances enumerated in paragraph 4(c) of the Policy immediately above, are not exclusive and other circumstances may be relied on by a Respondent.

Where a Complainant makes a prima facie case that the Respondent has no rights or legitimate interests in the domain name in dispute, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Complainant has made a prima facie case that the Respondent is the owner of multiple domain names of websites which are not in use.

Paragraph 4(c) of the Policy

The Respondent can demonstrate his rights or legitimate interests in the domain name pursuant to paragraphs 4(c)(i), 4(c)(ii) and 4(c)(iii) of the Policy or by other circumstances disclosing rights or legitimate interests.

Paragraph 4(c)(i) of the Policy

The Respondent has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Paragraph 4(c)(ii) of the Policy

The Respondent is listed as the Registrant of the domain name in dispute. The Respondent is an individual not commonly known by the domain name <gilead-sciences.com>.

Paragraph 4(c)(iii) of the Policy

The Respondent states that he is making a fair use of the domain name <gilead-sciences.com> as a non-commercial criticism site without intent to misleadingly divert consumers or to tarnish the trademark at issue.

Complainant has established that the Respondent is the registrant of numerous websites in which the domain name is comprised of the house mark of substantial corporations, together with a descriptor such as ‘inc.’, ‘co.’, ‘pharmaceuticals’, ‘corporation’, ‘biosciences’, together with the gTLD ‘.com’. The websites include the domain names <gilead-sciences.com>; <genzyme corporation.com>; <hb-fuller.com>; <hollis-edenspharmaceuticals.com>; <invitrogencorp.com>; <martekbioscience.com>; perrigocompany.com; <seronosa.com>; <watson-pharmaceuticals.com> and <biocrystpharmaceuticals.com>. Most of the websites are anonymous not showing the Registrant’s name. The Whois data shows the registrant contact, administrative contact, technical contact and billing contact as WhoisGuard.

Typical of most of the websites which are undeveloped is the “www.hb-fuller.com” website. The top center of the webpage features the logo of H.B. Fuller Co. accompanied by the registered trademark designation ®. Beside the logo in bold print is the house mark H.B. FULLER. Below the logo and house mark is the statement “HB-Fuller.com website will in time be the focal point for people to share their bad experiences about the company or any of their products. You are no longer alone! Share your experience with others”. Below the statement is the inactive link “Story @ HB-Fuller.com”. In small print below the above is “This is not the website of H.B. Fuller Co., nor is it affiliated with them in any way”.

The number of similar websites registered by the Respondent is unknown and the anonymous registration of websites by the Respondent makes the discovery of such websites difficult if not impossible. On September 7, 2005, prior to the filing of the Response in this case, a decision was handed down holding that the Respondent’s domain name <eastman-chemical.com> be transferred to the complainant. Eastman Chemical Company v. Kumar Patel, National Arbitration Forum, FA524752. The Respondent did not inform the Panel of this decision in its Response. In the Eastman Chemical case, the Complainant alleged that the domain name <eastman-chemical.com> fails to point to a website. In the Response, Respondent submitted that the use of the domain name <eastman-chemical.com> is a bona fide criticism site, which gives rise to a legitimate use. The extent of development of criticism websites is related to the filing of complaints. In BioCryst Pharmaceutical, Inc. v. Kumar Patel, WIPO Case No. D2005-0674, the complainant sought to make a supplemental filing based on “the change of factual situation, i.e. that the content of Respondent’s website has substantially changed after the filing of the complaint, …”. The Respondent states that it intends to develop criticism sites for all the websites which it has registered comprised of [trademark.com]. The Panel finds that the Respondent does not have rights or legitimate interests as the criticism sites [trademark.com] are not developed or active or are only partially developed before a dispute arises or is expected to arise.

In the case of Lamparello v. Jerry Fallwell; Jerry Falwell Industries, United States Court of Appeals, No. 04-0211m Bi, 04-2122, the Court of Appeal noted that Lamparello only had one domain name and distinguished cases relating to multiple domain names stating at page 19 “…the Sixth Circuit concluded that her conduct did not constitute that which Congress intended to proscribe – i.e.; the registration of multiple domain names. Lucas Nursery & Landscaping, 359 F 3d at 810”.

The statement of the Court of Appeal was based on the Anti-Cybersquatting Consumer Protection Act, and as such, is of interest, in that under that Act the use of multiple registrations of domain names may be treated differently than registration of a single domain name.

There was no evidence of the content of websites associated with the registration of multiple domain names registered by the Respondent in BioCryst Pharmaceutical, Inc. v. Kumar Patel, WIPO Case No. D2005-0674 or Eastman Chemical Company v. Kumar Patel, National Arbitration Forum, FA524752. The above decisions are of no assistance on the issue of multiple domain name registrations.

The Panel finds that the Respondent has not established that he has not registered multiple domain name websites which are dormant.

Using Complainant’s Mark in a Genuine Criticism Site

There are two views in UDRP decisions concerning whether a respondent, using a domain name comprised of a complainant’s trademark for a genuine criticism site, generates rights or legitimate interests. Eastman Chemical Company v. Kumar Patel, supra.

There are numerous decisions in which genuine free speech or criticism sites, having a domain name comprised of a complainant’s trademark and a gTLD, support a respondent’s claim to rights or legitimate interests in the domain name. Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190.

There is a second line of UDRP decisions which hold that the right to criticize does not extend to registering a domain name incorporating the trademark of another, or a domain name confusingly similar thereto, or conveys an association with the trademark. Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136, where the panel stated: “Thus, while Respondent may express its views about the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm. And, there is nothing in the domain name to indicate that the site is devoted to criticism, even though that fact is apparent when visiting the site. By using Complainant’s service mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users. These views are just as applicable in this case as when first expressed in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299”.

In the present case, the Respondent is using a domain name which falsely conveys an association with the Complainant.

It is not fair use of a criticism page to scroll multiple brand marks of the Complainant, together with their getup, while only criticising one brand name product.

The fact situation in this case differs substantially from the facts before the panel in Biocryst Pharmaceuticals Inc. v. Kumar Patel, supra, where the panel did not have any evidence of multiple website pages owned anonymously by the Respondent.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely: (i) circumstances indicating that 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) 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) 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 respondent’s website or location or of a product.

Registered In Bad Faith

The trademark GILEAD SCIENCES was a well known trademark in the United Kingdom having been extensively used there since 1990 in relation to pharmaceuticals and research. The Respondent included the logo, trademark and slogan of the Complainant on its website. The Panel finds that the Respondent knew of the Complainant and its trademarks prior to registration of the domain name in dispute.

Used In Bad Faith

The Panel relies on the findings concerning registration of multiple domain names by the Respondent reviewed above and finds that the Complainant has proven on a balance of probabilities that the Respondent has registered the domain name in dispute and numerous other domain names incorporating the trademarks of well known companies in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. See Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., supra, where the panel found use in bad faith stating: “In view of Respondent’s actions, there can be no doubt that Respondent has prevented Complainant from using its registered service mark in a corresponding domain name and that Respondent has engaged in a pattern of registering as domain names, the names of firms offering legal services; see Chadbourne and Parke LLC v. American Distribution Systems, Inc dba DefaulatData.com and Brian Wick, WIPO Case No. D2003-0553 and cases cited therein.”

The Respondent used the gTLD ‘.com’ in association with the domain name in dispute. The gTLD ‘.com’ is used to indicate commerce. The Respondent submits that he is not using the domain name in dispute in commerce. There is no indication in the domain name in dispute that it is not being used in commerce. Although the Respondent has expressed a commendable goal of operating a complaint website, the domain name selected by the Respondent masks Respondent’s expressed goal. As other panels have stated, the right to genuine complaint is permissible, but it is not free speech to use a domain name Internet users will associate with Complainant’s commercial enterprise to attract Internet users to a website not associated with the Complainant. See Eastman Chemical Company v. Kumar Patel, National Arbitration Forum FA524752; Eastman Chemical Company v. Kumar Patel, National Arbitration Forum, FA561094.

The Panel finds that the Respondent registered and used the domain name in dispute in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <gilead-sciences.com> be transferred to the Complainant.


Ross Carson
Sole Panelist

Dated: November 17, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0831.html

 

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