The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Matkowsky Law, United States of America.
The Respondents are Konayem Temirtassova of Aktau, Kazakhstan; Tigran Movsisyan of Lori, Armenia; Aleksandr Bannikov of Volgograd, the Russian Federation; Valentin Barshev of Perm, the Russian Federation; Oleg Sobin of Moscow, the Russian Federation; Igor Ivanov of Habarovsk, the Russian Federation; Sergey Timofeev of Sankt-Peterburg, the Russian Federation; Igor Ivanov, N/A of Kursk, the Russian Federation; Vladimir D Kiskov, Private Person of Perm, the Russian Federation; Irina F Scherban, Private Person of Krasnoyarsk, the Russian Federation; Aleksandr V Sivkov, Private Person of Moskva, the Russian Federation; Igor Ivanov, [RU]70983550 of Severodvinsk, the Russian Federation; Albert Sadykov, [RU]722410292 of Samara, the Russian Federation; Tigran Mosisyan, [AM]0720347 of Erevan, Armenia; Vladimir Kiskov, [RU]4607604244 of Novosibirsk, the Russian Federation; Anastasiya Yankova, [RU]4606291090 of Astrahan, the Russian Federation; Konstantin Tkachev, [RU]4507343219 of Novgorod, the Russian Federation; Kristina Melnichenko, [RU]712403282 of Nizhnekamsk, the Russian Federation; Igor A Ivanov, Private Person of Belgorod, the Russian Federation; Zhuhai Yingxun Keji Limited aka Zhuhai Yingxun information technology limited of Zhuhai, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , and are registered with Binero AB.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Eranet International Limited.
The disputed domain names , , , and are registered with GoD, LLC.
The disputed domain names , and are registered with Mesh Digital Limited.
The disputed domain names , , , , and are registered with PDR Ltd. d/b/a PublicDomainR.
The above 74 disputed domain names are hereafter referred to together as the "Domain Names". The above five registrars are hereafter referred to as "the Registrars". 3. Procedural History
The Complaint involving 59 domain names was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2015. On June 10, 2015, the Center transmitted by email to the previous registrars a request for registrar verification in connection with those 59 domain names. Upon receipt of responses from these registrars, the Center notified the Complainant of change in registrant information on June 17, 2015.
On July 6, 2015, the Complainant submitted an amended Complaint requesting to remove those 59 domain names and to add the 74 Domain Names (as well as a .GQ domain name1) into the current proceeding. The amended Complaint also included a consolidation request regarding multiple Respondents. On the same day, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. Between July 7 and July 8, 2015, the Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center regarding the registrant information of all .NU domain names, the Complainant filed an amended Annex 4 to the amended Complaint on July 15, 2015. The Complainant also provided further statement in relation to consolidation of multiple Respondents.
On July 14, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding of the Domain Names , , , , , , , and . On July 16, 2015, the Complainant requested that English be the language of the proceeding regarding the Domain Names. The Respondents did not comment on the language of the proceeding by the specified due date or otherwise.
The Center verified that the amended 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 July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2015.
On August 5, 2015, the Center received an email communication from the Complainant requesting its email regarding the language request for English dated July 15, 2015 to be made available to the Panel. On the same day, the Center acknowledged receipt of this email communication indicating that it did not appear to have received the Complainant's language request email dated July 15, 2015. Nevertheless, the Center indeed received a language request from the Complainant on July 16, 2015. Further, the Center confirmed that the email communication from the Complainant dated August 5, 2015 would be included in the case file for the panel upon appointment.
The Center appointed Karen Fong as the sole panelist in this matter on August 20, 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. 4. Factual Background
The Complainant is a Swiss company engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world's leading-focused healthcare groups which has global operations in more than 100 countries.
The Complainant is the owner of the following trade marks:
ACCUTANE since 2004.
BACTRIM since 1968.
XENICAL since 1993.
The Complainant holds world wide trade mark registrations for the above mark and has provided evidence of ownership of these trade marks in various territories.
The Respondents are individuals and companies whose addresses as disclosed by the Registrars are located in Armenia, China, Kazakhstan, and the Russian Federation.
The 74 Domain Names were registered on the following dates:
1.
December 28, 2014
2.
November 30, 2014
3.
December 24, 2014
4.
November 30, 2014
5.
December 24, 2014
6.
November 30, 2014
7.
November 30, 2014
8.
June 3, 2014
9.
December 23, 2014
10.
August 8, 2014
11.
April 10, 2014
12.
November 30, 2014
13.
December 26, 2014
14.
November 30, 2014
15.
May 27, 2014
16.
March 17, 2014
17.
November 28, 2014
18.
December 16, 2014
19.
December 15, 2014
20.
November 24, 2014
21.
November 24, 2014
22.
December 28, 2014
23.
November 30, 2014
24.
June 30, 2014
25.
December 23, 2014
26.
May 28, 2014
27.
November 24, 2014
28.
December 23, 2014
29.
June 30, 2014
30.
November 30, 2014
31.
December 23, 2014
32.
May 29, 2014
33.
November 24, 2014
34.
December 28, 2014
35.
December 29, 2014
36.
May 28, 2014
37.
June 3, 2014
38.
May 29, 2014
39.
November 30, 2014
40.
June 3, 3014
41.
December 28, 2014
42.
December 10, 2014
43.
December 15, 2014
44.
December 15, 2014
45.
June 3, 2014
46.
November 24, 2014
47.
June 30, 2014
48.
December 19, 2014
49.
December 23, 2014
50.
June 30, 2014
51.
November 24, 2014
52.
June 30, 2014
53.
November 30, 2014
54.
December 10, 2014
55.
December 10, 2014
56.
December 12, 2014
57.
December 19, 2014
58.
June 30, 2014
59.
November 24, 2014
60.
December 24, 2014
61.
November 30, 2014
62.
December 24, 2014
63.
November 30, 2014
64.
May 28, 2014
65.
November 30, 2014
66.
May 27, 2014
67.
November 30, 2014
68.
December 28, 2014
69.
November 25, 2014
70.
November 25, 2014
71.
November 30, 2014
72.
December 28, 2014
73.
November 25, 2014
74.
November 30, 2014
5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to its trade marks ACCUTANE, BACTRIM and XENICAL, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network.
The basis of its belief that the registrants are related and under management and common control of a single network are as follows:
1. The Domain Names are under common control of a criminal network that registers third party proprietary brand names in domain names to drive traffic to rogue online pharmacies. In order to avoid detection, the network registers domain names using inaccurate WhoIs contact information as well as proxy services. As such the WhoIs records are unreliable for the purpose of identifying the true identities of the individuals acting in concert in a joint criminal enterprise, and yet there are indicia between them which point to common control.
2. The Complainant has been successful in a previous UDRP (F. Hoffman-La Roche AG v. Aleksandr Bannikov, Ahmad Shefa/na, Alexander Sivkov, Amr Nayel/na, Amy Burke/na, Name Redacted/na, Name Redacted/PRIVATE, Andrew Jun/PRIVATE, Andrey Knish, Name Redacted/na, Angela Rubineau/na, Annette Stokes/na, Arihant Jain/na, Arnold Fong/na, Bennie Johnson/na, Bogdan Orlovskiy, Brenton Smith/na, Bruce Vanhouweling/PRIVATE, Cesar Veloso/na, Chada Ashok/PRIVATE, Daniel Engeberg/na, Daniel Reyes-Villa/PRIVATE, David Dunn/na, David Walls/PRIVATE, Davindra Jailall/na, Debora Meitz/na, Ded Lopytyt/na, Denis Kozenko, Dmitrij Shuvalov, Domain Manager/Deactivated Domains, Domain Manager/Moniker WIPO Disputed/Moniker Privacy Service, Donald Koehler/ PRIVATE, Dred Polk/na, Edward Prince/na, Evgeniy Foloev, Funty Aerok/na, Garrett Chumney/PRIVATE, George Nicoloff/na, Name Redacted/PRIVATE, Hamilton Platt/na, Hauld Timm/na, Heywood Gay/na, Hing Frank/PRIVATE, Irina Shcherban, Ivan/Ivan Pavlov, Ivan Mironov, James Benjamn/PRIVATE, Jill Haltigan/na, John Arnold/na, John Blumer/na, Joon-Seok Jeon/PRIVATE, Kelrko Roman/na, Ken Tashiro/PRIVATE, Kirill Ruzakov, Klaert Alrk/na, Krontak Ladik/Krontak Ladik Koroleva, Lars Van Gaal/ N/A, Name Redacted/PRIVATE, Mamatha Yeturu/na, Martha Severino/na, Name Redacted/na, Natalia Gerdt, Natalia Gerdt, Poloyanskyy Piter/na, Rajaa Zayoud/PRIVATE, Rajan Raj/na, Raymond Briski/na, Rety Mark/na, Richard Williams, Rlnty Rose/na, Rolando Rolandelli/na, Rolko Pouj/na, Ronald Treh/na, Rot Fweds/na, Route Kriss/Na, Rzeczycki Thomas/PRIVATE, Salma Tidda/na, Samma Rogozi/NA, Sara Relit/na, Shan Sivendra/na, Somel Kurter/na, Timur Fartew/na, Timur Hel/na, Tod Aria/na, Tommy Higher/na, Toor Rotmant/na, Name Redacted/na, Torry Solma/na, Tracy Johnston/PRIVATE, Tricia Etheridge/na, Trimer Strimer/na, Vera Guertler/PRIVATE, Vitaliy Romashchuk, vladimir kiskov, Vladimir Kiskov, Uta Beyer, NA/ Whois Agent, Web Domains By Proxy, Yegor Karpovich, Private Registration/WhoisGuardS,WIPO Case No. D2015-0066 ("Bannikov I") against the same criminal network. The registrants in common in those proceedings and these are Aleksandr Bannikov, Aleksandr V Sivkov, Irina F Scherban and Vladimir Kiskcov. Further the account of […]@ which has been given in the contact information in connection with the Domain Name has been used with the other entities in this criminal network.
3. The domain names in issue in Bannikov I use the same trade marks as in this proceeding, incorporating the Complainant's trade marks in their entirety.
4. The websites connected to the Domain Names all bear similar traits ̶ many of them look they are temporarily down for maintenance, but the sites are activated when customers click on hyperlinks that the Respondents market with. At the time of the filing of the Complaint the websites connected to the Domain Names display the identical message on the homepage that the service is temporarily down for maintenance. They were all hosted within IP networks operated by Softlayer, with the same globally unique Autonomous System Number (ASN). When the websites are activated, some appear to promote rogue online pharmacies referred to as SKY Pharmacy, My USA Express and Canadian Health & Care Mall. These traits were also present in respect of some of the Bannikov I domain names.
5. There was a second template website used in the Bannikov I proceeding where a fourth pharmacy, CanadianDrugStore, was promoted alongside SKY Pharmacy, My USA Express and Canadian Health & Care Mall, all of which were found by the panel is that proceeding to be under common control of the network. In the present proceeding, some of the Domain Names when activated promote CanadianDrugStore as well. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Preliminary Procedural Issue - Consolidation of the Proceeding
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent's cases and extracted the following general principles:
1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity or network and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant's marks and harming consumers. The Panel also finds that the Respondents are likely to be one and the same as the Respondents in the Bannikov I proceeding.
The Respondents failed to respond substantively to the Complaint notwithstanding the allegations that they are a criminal network which reinforces the Complainant's case of common control by a known cybersquatter following a pattern of behavior.
Accordingly, applying the principles to the facts in this case, and in the absence of any response from the Respondents, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. C. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, Eranet International Limited, the language of the Registration Agreements in relation to the Domain Names , , , , , , , and is Chinese.
The Complainant submits on July 15 and 16, 2015 that the language of the proceeding should be English for the following reasons:
(1) The Respondents are likely to be under common ownership or control of the criminal enterprise behind Bannikov I which was conducted in English without any objections;
(2) The nine Domain Names incorporate only English words or phrases and all the websites that are connected to these Domain Names are in English showing that the Respondents are familiar with and capable of communicating in English;
(3) Some of these nine Domain Names have identical contact information as the Domain Names which are subject to English registration agreements;
(4) Some of the Domain Names use the proxy services provided by TodayNic. The fact that the proxy service resides in China does not mean that the registrants reside there themselves. Further these Domain Names are registered on the same dates with the same contact details as some of the other Domain Names which use English registration agreements. They are also on the same servers as the ones using the proxy service.
(5) Having to conduct separate parallel proceedings in Chinese would serve to add to the Complainant's costs and cause delay and inconvenience.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondents are familiar with the English language and will not be disadvantaged from the proceeding being in English. The Complainant on the other hand may be unduly disadvantaged by having to conduct the proceeding in Chinese. Further given the Panel's findings in relation to consolidation of the disputes, it would be procedurally inefficient and cost ineffective for this proceeding to be reissued as two sets of proceedings, one to be conducted in English and the other in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in English and Chinese. Even so, the Respondents have elected not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade marks ACCUTANE, BACTRIM and XENICAL.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Complainant's registered trade marks are reproduced in their entirety in the Domain Names. They form the dominant portion of the Domain Names. Where there are additions to the trade marks, the additions comprise of descriptive words like "sale", "for sale", "generic", "online", "vitamina", "antobiotic", "cost", "medication", "buy", "prescription", "over the counter", "cheap", "cheapest", "how much", "where to buy", "diet pill"; letters of the alphabet and numerals; dosage strengths like "40mg" and pharmaceutical ingredients like "isotretinoin" and "orlistat". The addition of such prefixes and suffixes do nothing to minimize the risk of confusion.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic various domain suffixes.
For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights. E. Rights or Legitimate Interests
The Complainant has not authorized the Respondents to use its trade marks or register the Domain Names. The Respondents are not authorised vendors, suppliers or distributors of the Complainant. The Respondents have not made any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, and are not making any legitimate noncommercial or fair use of the Domain Names. The websites connected to the Domain Names are either displaying messages that they are temporarily down for maintenance or are used to entice customers to online pharmacies that do not have the appearance of any legitimacy. Consumer alerts have been issued in respect of these pharmacies. Such use does not confer rights or legitimate interests especially where this is done to compete with the goods and services of the rights holder. The intention here is to mislead and confuse customers which will also be likely to have a detrimental effect on consumers, not to mention the reputation of the Complainant.
The Panel takes the view as stated in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) "[…] that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark."
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondents. The Respondents have not responded and the Panel is unable to conceive of any basis upon which the Respondents could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. F. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been registered and used in bad faith.
The Panel is satisfied that the Respondents were aware of the ACCUTANE, BACTRIM and XENICAL trade marks when they registered the Domain Names. The Complainant has used these trade marks decades before the registration of the Domain Names. The trade marks are also well known trade marks. The very incorporation of the trade marks in the Domain Names as well as addition of terms descriptive of the Complainant's industry and products confirm the Respondents' awareness of the ACCUTANE, BACTRIM and XENICAL trade marks.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the use of the Domain Names is in bad faith. The reasons are as follows:
(1) The websites connected to the Domain Names when activated promote rogue pharmaceutical websites which could potentially divert Internet users and potential customers away from the Complainant and disrupt the business of the Complainant while potentially harming consumers;
(2) Such use by the Respondents shows an intention on the part of the Respondents to attract for commercial gain by misleading Internet users into believing that the websites are authorised by or somehow connected to the Complainant.
(3) As evidenced above in the sections relating to the consolidation of the proceeding, the Respondents have gone to great lengths to hide their identity in order to avoid the legal consequences of prolific cybersquatting activities they are engaged in.
(4) Even in the case of the websites which are inactive because they give the appearance of being under maintenance, it does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the Respondent is acting in bad faith. UDRP panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. In this case, inferences of bad faith use is found in the following ̶ as stated in the finding in favour of consolidation, the Respondents are clearly attempting to hide their identities, the Complainant's trade marks are well known trade marks and the Respondents have failed to file a Response.
From the above, the Panel concludes that Domain Names were registered and are being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: September 7, 2015
1 The .GQ domain name was subsequently deleted from the current proceeding by the Complainant.
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