The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Matkowsky Law, United States of America.
The Respondents are Aleksandr Bannikov of Volgograd, the Russian Federation; Ahmad Shefa/na of Waco, Texas, United States of America; Alexander Sivkov of Moscow, the Russian Federation; Mr. Nayel/na of New York, New York, United States of America; Amy Burke/na of New York, New York, United States of America; Name Redacted/na of New York, New York, United States of America; Name Redacted/PRIVATE of East Lansing, Michigan, United States of America; Andrew Jun/PRIVATE of Honolulu, Hawaii, United States of America; Andrey Knish of Lviv, Ukraine; Name Redacted/na of Coatesville, Pennsylvania, United States of America; Angela Rubineau/na of New York, New York, United States of America; Annette Stokes/na of Milwaukee, Wisconsin, United States of America; Arihant Jain/na of Hamilton, Missouri, United States of America; Arnold Fong/na of Ponte Vedra Beach, Florida, United States of America; Bennie Johnson/na of Rossville, Georgia, United States of America; Bogdan Orlovskiy of Arhangelsk, the Russian Federation; Brenton Smith/na of Hanford, California, United States of America; Bruce Vanhouweling/PRIVATE of Solon, Iowa, United States of America; Cesar Veloso/na of Ridgewood, New Jersey, United States of America; Chada Ashok/PRIVATE of Hickman, Kentucky, United States of America; Daniel Engeberg/na of Hanford, California, United States of America; Daniel Reyes-Villa/PRIVATE of San Jose, California, United States of America; David Dunn/na of Downers Grove, Illinois, United States of America; David Walls/PRIVATE of Red Bud, Illinois, United States of America; Davindra Jailall/na of Cambridge, Maryland, United States of America; Debora Meitz/na of Key West, Florida, United States of America; Ded Lopytyt/na of Jacksonville, Florida, United States of America; Denis Kozenko of Samara, the Russian Federation; Dmitrij Shuvalov of Kalinigrad, Kaliningradskaya, the Russian Federation; Domain Manager/Deactivated Domains of Pompano Beach,Florida, United States of America; Domain Manager/Moniker WIPO Disputed/Moniker Privacy Services of Fort Lauderdale, Florida, United States of America; Donald Koehler/ PRIVATE of Cody, Wyoming, United States of America; Dred Polk/na of Denver, Colorado, United States of America; Edward Prince/na of Port Matilda, Pennsylvania, United States of America; Evgeniy Foloev of Warsaw, Poland; Funty Aerok/na of Brinkley, Arkansas, United States of America; Garrett Chumney/PRIVATE of Tallahassee, Florida, United States of America; George Nicoloff/na of Novi, Michigan, United States of America; Name Redacted/PRIVATE of Lakeland, Florida, United States of America; Hamilton Platt/na of Palm Beach Gardens, Florida, United States of America; Hauld Timm/na of San Francisco, California, United States of America; Heywood Gay/na of Millen, Georgia, United States of America; Hing Frank/PRIVATE of Washington, Washington, United States of America; Irina Shcherban of Moscow, the Russian Federation; Ivan/Ivan Pavlov of Minsk, Belarus; Ivan Mironov of Moscow, the Russian Federation; James Benjamn/PRIVATE of Bowie, Maryland, United States of America; Jill Haltigan/na of New Castle, Pennsylvania, United States of America; John Arnold/na of Bushnell, Illinois, United States of America; John Blumer/na of Brunswick, Georgia, United States of America; Joon-Seok Jeon/PRIVATE of Allentown, Pennsylvania, United State of America; Kelrko Roman/na of Farmington,Michigan, United States of America; Ken Tashiro/PRIVATE of Joint, Maryland, United States of America; Kirill Ruzakov of Moskva, the Russian Federation; Klaert Alrk/na of Chicago, Illinois, United States of America; Krontak Ladik/Krontak Ladik Koroleva of Portland, Oregon, United States of America and of Kiev, Ukraine respectively; Lars Van Gaal/N/A of Utrecht, Netherlands; Name Redacted/PRIVATE of Milwaukee, Wisconsin, United States of America; Mamatha Yeturu/na of Broomall, Pennsylvania, United States of America; Martha Severino/na of Danbury, Connecticut, United States of America; Name Redacted/na of Honolulu, Hawaii, United States of America; Natalia Gerdt of Moscow, the Russian Federation; Natalia Gerdt of Moscow, the Russian Federation; Poloyanskyy Piter/na of Fort Wayne, Indiana, United States of America; Rajaa Zayoud/PRIVATE of North Brunswick, New Jersey, United States of America; Rajan Raj/na of Des Plaines, Illinois, United States of America; Raymond Briski/na of Watchung, New Jersey, United States of America; Rety Mark/na of Boise, Idaho, United States of America; Richard Williams of Reservoir, Victoria, Australia; Rlnty Rose/na of New York, New York, United States of America; Rolando Rolandelli/na of Morristown, New Jersey, United States of America; Rolko Pouj/na of Burbank, California, United States of America; Ronald Treh/na of Anchorage, Arkansas, United States of America; Rot Fweds/na of Atlanta, Georgia, United States of America; Route Kriss/Na of Englewood, Colorado, United States of America; Rzeczycki Thomas/PRIVATE of Hilton Head Island, South Carolina, United States of America; Salma Tidda/na of Canyon City, Colorado, United States of America; Samma Rogozi/NA of Ottawa, Ontario, Canada; Sara Relit/na of Guelph, Ontario, Canada; Shan Sivendra/na of Livingston, New Jersey, United States of America; Somel Kurter/na of Denver, Colorado, United States of America; Timur Fartew/na of New York, New York, United States of America; Timur Hel/na of San Diego, California, United States of America; Tod Aria/na of Edinburgh,Indiana, United States of America; Tommy Higher/na of Idaho Falls, Idaho, United States of America; Toor Rotmant/na of Des Moines, Iowa, United States of America; Name Redacted/na of Toronto, Ontario, Canada; Torry Solma/na of Frankfurt, Germany; Tracy Johnston/PRIVATE of Winchester, Virginia, United States of America; Tricia Etheridge/na of Ridgeland, South Carolina, United States of America; Trimer Strimer/na of Huntsville,Alabama, United States of America; Vera Guertler/PRIVATE of Reading, Pennsylvania, United States of America; Vitaliy Romashchuk of Smolensk, the Russian Federation; Vladimir kiskov of Severouralsk, Sverdlovskaya, the Russian Federation; Vladimir Kiskov of Scottsdale, Arizona, United States of America; Uta Beyer, NA of Thuringia, Germany/Whois Agent, Web Domains By Proxy of Lahore, Punjab, Pakistan; Yegor Karpovich of Kaliningrad, the Russian Federation; Private Registration/WhoisGuardS of Nanjing, Jiangsu China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , are registered with GoD, LLC.
The disputed domain names , , and are registered with Moniker Online Services, LLC.
The disputed domain name is registered with NameSilo, LLC.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Nanjing Imperiosus Technology Co. Ltd.
The disputed domain name is registered with Netlynx Inc.
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
The disputed domain names and are registered with Paknic (Private) Limited.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , are registered with T, Inc.
The disputed domain name is registered with Tucows Inc.
The disputed domain names , , , , , , , , , , , , and are registered with Vautron Rechenzentrum AG.
The above-mentioned domain names are referred to hereinafter as the “disputed domain names”. The above-mentioned registrars are hereinafter as the “Registrars”. 3. Procedural History
The Complaint involving 154 disputed domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2015. On January 16, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. Between January 16, 2015 and January 22, 2015, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details with the exception for the disputed domain name . On January 19, 2015, the Registrar, Paknic (Private) Limited, transmitted to the Center its verification responses disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2015, providing the registrant and contact information disclosed by the Registrar, Paknic (Private) Limited, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 27, 2015. On January 27, 2015, the Complainant also filed another amendment to the Complaint to remove one domain name from the current proceeding as that domain name expired before the filing of the Complaint and was not registered.
On January 22, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding in relation to the disputed domain names that are registered with the Registrar, Nanjing Imperiosus Technology Co. Ltd. On January 24, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendments 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(a) and 4(a), the Center formally notified the Respondents of the Complaint in both Chinese and English, and the proceeding commenced on January 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2015. Between February 4, 2015 and February 18, 2015, email communications were received from some of the Respondents which appeared to claim identity theft. The Center acknowledged receipt of these email communications and indicated that it would be within the Panel’s discretion to decide the identity of the Respondents. On February 20, 2015, the Center informed the parties that it would proceed with appointment of an Administrative Panel.
The Center appointed Luca Barbero as the sole panelist in this matter on February 26, 2015. 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.
On March 13, 2015, the Center notified to the parties an extension of 10 days of the due date for decision. 4. Preliminary Matters A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the Parties or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the relevant Registration Agreement, but the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. In all cases, the Panel shall ensure, according to paragraphs 10(b) and 10(c) of the Rules, that the Parties be treated with equality and that that the administrative proceeding take place with due expedition.
In the case at hand, the language of the Registration Agreements for 118 of the disputed domain names is English, while for the 35 disputed domain names registered with the Registrar Nanjing Imperiosus Technology Co. Ltd is Chinese. No agreement has occurred between the Complainant and the Respondents with respect to the language of the proceeding.
The Complainant submitted the Complaint in English and requested that the proceeding be conducted in such language for the following reasons:
- the overwhelming majority of the disputed domain names were registered by the Respondents with registrars whose registration agreements are in English, thus demonstrating that the Respondents understand and can use English;
- the disputed domain names registered through Nanjing Imperiosus Technology Co. Ltd., where Chinese was reported to be the language of the Registration Agreement, were registered using identities of individuals in the United States of America, where Chinese is not an official language;
- all of the active web sites published at the disputed domain names use English by default;
- to require a small percentage of Respondent’s domain names to be subject to a parallel separate proceeding in Chinese, rather than consolidated with all the other domains that were registered with registrars whose registration agreements are in English would serve no legitimate purpose, only adding to the Complainant’s costs and cause delay and inconvenience.
The Respondents did not file any submissions with respect to the language of the proceeding.
As stated, amongst others, in Guccio Gucci S.p.A v. Andrea Hubner et al, supra, “In exercising its discretion to adopt a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above and considering that most of the disputed domain names are comprised of the Complainant’s marks with the addition of English generic terms, the Panel finds that there is sufficient evidence to suggest the likely possibility that the Respondent is conversant and proficient in the English language and that the Respondent would not be prejudiced by the adoption of English as the language of the proceeding.
Therefore, the Panel determines that the language of the proceeding shall be English. B. Consolidation of Respondents
The Complainant requests to proceed against the multiple named Respondents in this single administrative proceeding.
As stated in prior UDRP decisions, a consolidation of multiple respondents in a single proceeding may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the circumstances of a given case indicate that common control is being exercised over the disputed domain names or the web sites to which the domain names resolve and the consolidation would be fair and equitable to all parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The burden of proof for establishing that the disputed domain names are subject to common control is a preponderance of the evidence, as stated amongst others in Seiko Holdings Kabushiki Kaisha v. L. Collins Travis, C. Turner Jose, et al.,WIPO Case No. D2013-0994; and Lanc me Parfums Et Beaut Et Compagnie v. You Ge, Jean Buding, Kang Tianhuan, Zongkaili, Leigeng,WIPO Case No. D2013-1559.
The Complainant alleges that the Respondents are a “criminal network organization that sponsors ‘spammers’ to promote rogue online pharmacies using domains registered with stolen credit cards and identities, or with services that generate fake names to simulate real identities.”
The Complainant has submitted detailed evidence in support of its submissions that the disputed domain names are subject to common control, including spreadsheets listing the common factors linking the disputed domain names.
In order to facilitate the description of the connections among the disputed domain names and especially the respective web sites, the Complainant has distinguished the sites at the disputed domain names between “feeder” sites, referring to micro-sites used to send targeted traffic to a main site; and “anchor” sites, referring to main sites promoted via feeder sites, where visitors shop online to make purchases.
The Complainant has identified an anchor web site at the disputed domain name and additional anchor sites based on domain names not comprising the Complainant’s trademarks – thus not subject of this proceeding – but linked to other disputed domain names, which function as feeder sites.
The Complainant has also distinguished different templates of web sites (referenced by the Complainant and hereinafter as “Template”) depending on the web site layout and on the telephone contact information published therein.
The starting point of the Complainant’s analysis is the anchor web site published at the disputed domain name , that hosts a table (“Table 1”) where three online pharmacies are compared, two of which were hosted on web sites available at the domain names and (subsequently deactivated and replaced with other web sites). The Complainant submits that these three domain names are under common control as they share the same email address, and identifies in the two latter web sites different templates, referred as “Template 1” and “Template 2” respectively, that are replicated on other web sites. In particular, it is stated that variations of Template 2 have been used on the web sites available at the domain names , , and , while variations of Template 1 on domain names such as and .
The disputed domain names have been divided into seven groups and a demonstrative chart showing how these groups of disputed domain names are connected to each other is attached to the Complaint at Annex 7.
According to the Complaint, the disputed domain names have been divided in seven groups based on the following grounds:
- One hundred and three of the disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , identified as “Group 1”, act as feeder sites, meaning that when visitors click on any product to make a purchase, they are diverted to the anchor site available at “www.”, using the same customer support phone numbers used in Template 2;
- Three of the disputed domain names, , and , identified as “Group 2”, are feeder sites used to divert purchasers to the anchor web site available at “www.”, also using the same direct customer support phone numbers used in Template 2;
- Three of the disputed domain names, , and , identified as “Group 3”, are feeder sites used to divert purchasers to the anchor site published at “www.”, using the same direct customer support phone numbers used in Template 2;
- Five of the disputed domain names, , , , and , identified as “Group 4”, were registered with email accounts that were also used to register some of the feeder sites diverting users to place orders with the anchor site “www.” and using the phone numbers for direct customer support in Template 2; four of the disputed domain names in this group are actively being used as additional feedersites to place orders with the rogue online pharmacy at “”, which uses two additional sets of phone numbers for direct customer support, defined as Template 5;
- Four of the disputed domain names, , , and , identified as “Group 5”, also act as feeder sites to place orders with “” using Template 5. The web site published at the disputed domain name , though showing a new template of web site, used the same direct customer support phone numbers as in Template 5;
- Fifteen disputed domain names, , , , , , , , , , , , , , and , identified as “Group 6”, hosted on the correspondent web sites a variation of the comparison shopping Table 1 (“Table 2”), the only difference being that it included also a fourth rogue online pharmacy that was originally hosted at the domain name , registered using the same email account as ;
- Eighteen disputed domain names, , , , , , , , , , , , , , , , , and , identified as “Group 7”, are currently inactive, but were registered using email addresses used to register the disputed domain names in Group 6.
As an additional commonality among the disputed domain names, the Complainant highlights that the registrants’ phone numbers of several of the disputed domain names included in groups 1, 2, 4 and 5 include the phone number followed by an extension code constituted by the repetition of the exact same phone number.
None of the named Respondents filed any submissions with respect to consolidation of the Respondents. After the notification of the Complaint, as mentioned above, several email communications were sent to the Center by the named Respondents claiming identity theft, a circumstance which appear to corroborate the Complainant’s assertions that the Respondents used fictitious names and identities to register the disputed domain names.
In view of the above, and considering that i) all the disputed domain names incorporate the Complainant’s marks in their entirety; ii) the disputed domain names included in the different groups identified by the Complainant are similar to each other; and iii) most part of the disputed domain names have been used actively to redirect users to purported online pharmacies sharing similar contents, the Panel concludes that, on the balance of probabilities, the disputed domain names are controlled or under the common ownership of the same person or the same organization of individuals acting in concert. See, along these lines, Guccio Gucci S.p.A v. Andrea Hubner et al,WIPO Case No. D2012-2212: and CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071 (consolidating multiple false aliases and spoofed identities in the context of rogue online pharmacy operations).1
The Panel also finds, under paragraph 10(e) of the Rules, that the consolidation of the Respondents in this proceeding is procedurally efficient and equitable to the parties. 5. Factual Background A. The Complainant
The Complainant is a Swiss company engaged in the research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups, having global operations in more than 100 countries.
The Complainant is the owner of the trademark XENICAL since 1993.
Depending on the geographic market and a variety of factors, the Roche Group, through its applicable subsidiary, including the Complainant, uses either ACCUTANE, ROACCUTAN, or ROACCUTANE as a trademark covering a medical formulation indicated for the treatment of acne, including the severer forms.
The Complainant is also the manufacturer or supplier of the BACTRIM anti-bacterial agent that has been deemed an essential medicine by the World Health Organization.
The Complainant has provided evidence of ownership, amongst others, of the following trademark registrations:
- International trademark registration No. 612908 for XENICAL (word mark), registered on December 14, 1993, in class 5;
- International trademark registration No. 840371 for ACCUTANE, registered on December 6, 2004, in class 5;
- International trademark registration No. 450092 for ROACCUTAN (word mark), registered on December 13, 1979, in class 5;
- International trademark registration No. 349140 for BACTRIM (word mark), registered on August 20, 1968, in class 5. B. The Respondents
The Respondents are individuals or companies whose addresses as disclosed by the concerned Registrars are located in the United States of America, Ukraine, the Russian Federation, Poland, Belarus, the Netherlands, China, Germany, Canada and Pakistan. C. The Disputed Domain Names
The 153 disputed domain names were registered on the following dates:
November 3, 2014
April 9, 2014
July 17, 2014
October 27, 2014
September 19, 2014
December 29, 2013
February 14, 2014
January 14, 2014
July 17, 2014
November 29, 2013
December 29, 2013
November 3, 2014
November 3, 2014
September 20, 2014
June 7, 2014
April 10, 2014
September 5, 2014
January 14, 2014
November 2, 2014
June 21, 2014
August 5, 2014
April 4, 2014
February 4, 2014
June 18, 2014
December 24, 2013
July 9, 2014
August 25, 2014
September 12, 2014
December 24, 2013
October 27, 2014
November 3, 2014
November 2, 2014
July 2, 2014
August 12, 2014
September 12, 2014
February 8, 2014
June 20, 2014
July 2, 2012
July 13, 2014
January 14, 2014
January 13, 2014
December 17, 2013
July 9, 2014
January 24, 2014
May 12, 2014
April 15, 2014
April 15, 2014
April 10, 2014
January 24, 2014
January 24, 2014
December 17, 2013
March 17, 2014
August 13, 2014
July 8, 2014
July 9, 2014
September 18, 2014
November 3, 2014
January 14, 2014
January 24, 2014
July 9, 2014
July 2, 2014
April 9, 2014
September 12, 2014
September 23, 2014
October 27, 2014
September 18, 2014
November 3, 2014
December 17, 2013
September 18, 2014
June 7, 2014
May 9, 2012
March 30, 2014
June 9, 2014
March 20, 2014
December 19, 2014
November 2, 2014
November 3, 2014
October 11, 2014
October 15, 2014
June 28, 2014
July 9, 2014
June 20, 2014
July 2, 2012
October 31, 2014
March 20, 2014
December 29, 2013
April 17, 2013
July 9, 2014
July 17, 2014
January 25, 2014
January 28, 2014
September 12, 2014
July 2, 2014
July 16, 2014
July 8, 2014
July 9, 2014
August 6, 2014
February 20, 2014
July 17, 2014
September 2, 2014
February 24, 2014
February 27, 2014
February 27, 2014
April 3, 2014
July 17, 2014
March 20, 2014
October 11, 2014
October 11, 2014
October 28, 2014
July 2, 2014
September 2, 2014
October 10, 2014
September 18, 2014
October 10, 2014
September 19, 2014
October 28, 2014
May 16, 2014
September 12, 2014
September 20, 2014
December 25, 2012
July 2, 2014
September 2, 2014
September 12, 2014
July 2, 2014
July 17, 2014
September 18, 2014
November 3, 2014
October 10, 2014
June 28, 2014
July 17, 2014
August 13, 2014
October 28, 2014
March 20, 2014
July 2, 2014
September 2, 2014
October 10, 2014
September 2, 2014
February 20, 2014
June 7, 2014
June 7, 2014
April 3, 2014
June 18, 2014
July 9, 2014
July 2, 2014
November 3, 2014
March 17, 2014
December 30, 2013
December 11, 2013
December 30, 2013
October 11, 2014
July 17, 2014
October 27, 2014
October 10, 2014 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to at least one of the protected marks in which Complainant has rights, since the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. It highlights that, with the exception of , comprised of only the ACCUTANE and ROACCUTANE trademarks, all the other disputed domain names contain the entirety of either the BACTRIM, ACCUTANE, ROACCUTANE, or XENICAL trademarks combined with descriptive or generic terms mostly referring to buying the medicine online (“buy”, “online,” “order” or “purchase”), but in some cases referring to its availability (e.g., “365”), active pharmaceutical ingredient (“Isotretinoin“), pricing (e.g., “cost,” “cheap” or “discount”), dosage/strength (“ds” or “mg”), form (e.g., “pills or “cream”), purported origin (“Canada”), or secondary marks or terms only associated with the trademark (e.g., “BACTRIM Forte” or “BACTRIM F”), none of which negates confusing similarity.
The Complainant also states that the risk of confusion should be considered with even greater care with reference to some of the disputed domain names that contain the term “generic” combined with one of the Complainant’s trademarks, as the goods covered by the registration are pharmaceuticals, and the likelihood of confusion could cause death or physical harm.
In order to establish the second requisite element of the absence of the Respondents’ rights or legitimate interests in the disputed domain names, the Complainant states that:
i) it has not authorized, licensed, or permitted the Respondents to register or use the disputed domain names, or to use their trademarks;
ii) the Respondents are not known by the disputed domain names, nor have the Respondents acquired any trademark rights in respect of the disputed domain names;
iii) the disputed domain names clearly allude to the Complainant, and the Respondents use them for profit with the purpose of capitalizing on the respective marks to create a likelihood of confusion, advertising for sale on the correspondent web sites purported Complainant’s products without disclosing the nature of the Respondents’ relationship with the online pharmacies, or even their own identity;
iv) the sites use counterfeit certificates of endorsement or “seals” from various Canadian authorities, even though there is no connection to Canada, or counterfeit SSL certificates, although no SSL Certificate can be found on the sites;
v) even to the extent that some of the sites to which the disputed domain names resolve offer purported generic versions of the trademarked medicines, the landing pages actually take users to unauthorized counterfeit or unapproved sales of the trademarked medicines themselves, not the generic variations, and also additional third-party competitive medicines are being offered, which is neither a bona fide use under the Oki Data2 principles nor a legitimate noncommercial or fair use;
vi) the temporary inactivity of some of the disputed domain names due to suspension by the concerned Registrar for spam and abuse corroborates the illegitimate use and risk of resumed activity unless and until the disputed domain names are under the Complainant’s control.
With reference to the circumstances evidencing bad faith, the Complainant indicates that there is no doubt that the Respondents were aware of the existence of the Complainant’s marks and that only someone who was familiar with the Complainant’s marks and its activity would have registered domain names incorporating well-known trademarks combined with descriptive or generic terms referring to buying the medicine online (“buy”, “online,” “order” or “purchase”), its availability (e.g., “365”), active pharmaceutical ingredient (“Isotretinoin“), pricing (e.g., “cost,” “cheap” or “discount”), dosage/strength (“ds” or “mg”), form (e.g., “pills or “cream”), purported origin (“Canada”), or secondary marks or terms only associated with the trademark (e.g., “BACTRIM Forte” or “BACTRIM F”).
As to the use of the disputed domain names, the Complainant contends that the Respondents are intending to attract the Internet users to their web sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its web sites, or at the very least by diverting confused users to web sites from which the Respondents gain commercially, such as through a revenue-sharing arrangement.
The Complainant also highlights that some of the disputed domain names used by Respondents appear to be down for maintenance or otherwise inactive, but the Respondent configures certain URLs on the disputed domain names to work when reached through links published on other web sites, or hyperlinks in spam messages, probably for purposes of avoiding detection. For illustrative purposes only, the Complainant highlights that the disputed domain name is configured to give the impression that it is inactive, but is reachable through specific URLs contained in other sites or spam messages. B. Respondents
No Responses addressing either the procedural or the substantial issues of the present dispute were submitted by the Respondents.
As mentioned in section 3, email communications were received by the Center from individuals named as Respondents in the Complaint who claimed identity theft or that the named Respondent did not exist at their address, all stating that they did not own the disputed domain names and were unaware of the registration in their names. Said communications were sent by the named registrants of the disputed domain names , , , , , , and . 7. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights on the trademarks ACCUTANE, ROACCUTAN, BACTRIM and XENICAL based on the trademark registrations cited in section 4A of this Decision and as per copies of the related trademark registration certificates submitted in Annex 4 to the Complaint.
All the disputed domain names entirely reproduce the Complainant’s registered trademarks. One of the disputed domain names, , comprises two of the Complainant’s trademarks, ACCUTANE and ROACCUTAN.3 The other 152 disputed domain names are respectively comprised of one of the Complainant’s trademarks mentioned above and of descriptive or generic terms or numbers. Specifically, the prefix or suffixes added to the Complainant’s marks include terms referring to the act of purchasing a medicine online (“buy”, “online,” “order” or “purchase”), to its availability (e.g., “365”), active pharmaceutical ingredient (“Isotretinoin“), pricing (e.g., “cost,” “cheap” or “discount”, or the phrases “how to get”, “how much is”), dosage/strength (“ds” or “mg”), form (e.g., “pills”, tab” or “cream”), purported origin (“Canada” or “UK” – acronym of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”)), or secondary marks or terms which are associated, in the use, with the Complainant’s trademark (e.g., “BACTRIM Forte” or “BACTRIM F”).
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview 2.0). Furthermore, for the purposes of determining identity or confusing similarity in UDRP proceeding, the generic Top-Level Domains (“gTLD”) “.com”, “.info”, “.net” and “.org” do not need to be considered.
Along these lines were the decisions issued in prior UDRP cases involving the Complainant, such as F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2012-0422 (“There can be no debate that [] is confusingly similar to the registered trade mark VALIUM…”) and F. Hoffmann-La Roche v. Whois Agent, Whois Privacy Protection Service,WIPO Case No. D2014-0496 (finding the word “purchase” in the domain name purely descriptive);
The Panel also notes that the use of the term “generic” in association with the Complainant’s trademarks in some of the disputed domain names is not sufficient to negate confusing similarity under the first element of the Policy, as stated amongst others in Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd.,WIPO Case No. D2006-0698 (finding confusingly similar to the VALIUM trademark).
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
With respect to this requirement provided by paragraph 4(a)(ii) of the Policy, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondents, which have not responded to the merits of the Complaint, have failed to demonstrate any rights or legitimate interests in the disputed domain names.
According to the Complainant’s submissions, which have thus remained unchallenged, the Complainant has not authorized the Respondents’ use of the trademarks ACCUTANE, ROACCUTAN, BACTRIM and XENICAL and the registration of the disputed domain names comprising said marks.
The Panel notes that there is no evidence showing that the Respondents might be commonly known by the disputed domain names.
Most of the disputed domain names are used to direct users to purported online pharmacies where no disclaimer is published as to the lack of association with the Complainant and no name and contact information is published, besides telephone numbers, about the entity that operates the sites. Moreover, the sites appear to use counterfeit certificates of endorsement or seals from Canadian authorities and counterfeit SSL certificates. Such use of the disputed domain names clearly cannot be qualified as bona fide as it has a high propensity to mislead and divert consumers.
With reference to the disputed domain names that are used to promote purported generic versions of the trademarked medicines, the Panel notes that links on the corresponding web sites lead users to other web sites hosting unauthorized counterfeit or unapproved sales of the trademarked medicines, not the generic variations. Moreover, where the Respondents’ web sites offer purported generic variations of the Complainant’s products, also additional third-party competitive medicines are offered for sale. This use of the disputed domain names does not amount to a bona fide offering of goods or services under the Oki Data principles, which require that the relevant web sites be used to sell only genuine trademarked goods and a clearly disclosed indication of the relationship between the web site operators and the trademark owner.
Some of the disputed domain names are currently not used in any manner as they have been suspended by the concerned Registrars for spam and abuse. The Panel concurs with the Complainant that such suspensions corroborate the illegitimacy of the Respondents’ use of the disputed domain names.
In view of the above, it also follows that all the disputed domain names are not being used in connection with a legitimate, noncommercial or fair use. Indeed, in light of the well-known character of the Complainant’s trademarks and the fact that they relate to pharmaceutical products, the Panel finds that said marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel therefore finds that the Complainant has proven that the Respondents have no rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the registration and use of the Complainant’s trademarks for several decades before the registration of the disputed domain names and of the well-known character acquired by the trademarks, the Panel finds that the Respondents must have known or ought to have known the Complainant’s trademarks when registered the disputed domain names, which incorporate them in their entirety.
The Panel also finds that, in light of the use of the disputed domain names as described above and evidenced in Annex 6 to the Complaint, the Respondents are – or have been, in cases where the disputed domain names have been suspended – attempting to attract, for commercial gain, Internet users to their web sites or to the web sites linked thereto, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of their web sites and of the products promoted therein.
As additional circumstances evidencing bad faith, the Respondents appear to have adopted third parties’ names and/or contact details in the WhoIs records of several of the disputed domain names, as highlighted by the numerous communications received by the Center, after the notification of the Complaint, by individuals included among the named Respondents who claimed that they were unaware of the registration of the disputed domain names. The Panel also notes that many of the disputed domain names were registered in the name of alleged privacy services which did not disclose the underlying registrants’ details to the Center.
The Panel therefore concludes that the disputed domain names were registered and are being used by Respondents in bad faith in accordance with paragraph 4(b)(iv) of the Policy. 8. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , ,, , , , , , , , , , , , , and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: March 23, 2015
1 The Panel has decided that no purpose is to be served by including the named Respondents in this decision, and has therefore redacted their names from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondents, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
2 Reference is made to the leading case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, establishing the conditions that a reseller or distributor of trademarked goods or services may satisfy to demonstrate rights or legitimate interests in a domain name which contains such trademark.
3 The Panel has noticed the Complainant’s statement that its affiliate company Roche Products Limited is the owner of the United Kingdom trademark registration No. 1119969 for ROACCUTANE since 1979, but nevertheless finds that the Complainant’s established ownership of trademark rights on the almost identical mark ROACCUTAN is sufficient to determine the confusing similarity with the disputed domain name which encompasses this mark, according to paragraph 4(a)(i) of the Policy.
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