Gilead Wins Sovaldi Domain Dispute Over Buyers’ Club Generic Sellers

Pharmaceutical company Gilead has made headlines in recent years for offering an effective hepatitis C drug that has helped many patients. And for the fact that it came with an eye-popping price tag. Perhaps in a sign of the times, Gilead this month won an open-and-shut case against a squatter on the domain name “sovaldi.eu,” that was offering lower-priced generic versions of Sovaldi, including through links to “buyers’ clubs” organised to obtain medicines more affordably. The website was called, “SOVALDI. The life-saving cure for Hepatitis C which nobody can afford.” Was it a little act of rebellion, or just another internet opportunist?

The case was handled under the World Intellectual Property Organization dispute settlement procedures. The decision is available here.

The disputed domain name was registered on July 19, 2017, by somebody in Germany named Carina Pavlova, according to the decision. The complaint was filed at WIPO on November 23, 2017. The respondent never replied to the complaints. The decision stated:

“According to evidence exhibited by the Complainant, on November 21, 2017 the disputed domain name resolved to an active website at “www.sovaldi.eu”. The website was headed: “SOVALDI. The life-saving cure for Hepatitis C which nobody can afford.” It referred to alternative “generic versions of Sovaldi” and provided links to other websites including those described as “buyers clubs”. These links included a link to a website at “www.fixhepc.com” which appeared to offer the facility to order products including “Generic Sovaldi” online. The Respondent’s website also drew attention to the profits said to have been made by the Complainant.”

The correct name of the relevant generic product is “sofosbuvir”, the decision points out.

Gilead clearly established its ownership of the Sovaldi brand and of any websites with that name, the decision found:

“The Complainant [Gilead] provides evidence of the commercial reputation of its SOVALDI mark, including total sales attributable to the product of approximately USD 20 billion between 2013 and 2016. It submits that it has approximately 108 registrations for the mark SOVALDI worldwide in addition to approximately 100 domain names incorporating the mark including <sovaldi.com>. The Complainant also exhibits press coverage concerning the SOVALDI product.”

The panel found the registrant of the domain had not rights to do so, and “in the knowledge of the Complainant’s mark SOVALDI and with the intention of taking unfair commercial advantage of that mark.”

It also said it “finds that the Respondent has used the disputed domain name to impersonate the Complainant and for the purposes of a website that attacks the Complainant and offers competing products for sale.”

So the law says that Gilead, which made $20 billion on the drug as of 2016, was the victim of unfair commercial advantage of its mark, and was the target of an attack by a competitor. It had every right to defend its mark.

Was there another side to the story that was not told? Maybe they should have just called it sofosbuvir.