The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Matkowsky Law P.C, United States of America (“United States”).
The Respondents are Binero AB of Kista, Sweden, Netfirms AB of Kista Sweden / Igor Ivanov of Severodvinsk, Russian Federation; Binero AB, Netfirms AB / Tigran Mosisyan of Erevan, Armenia; Private Person, Kseniya S Dzhabbarova of Annino, Leningradskaya, Russian Federation; Kseniya Dzhabbarova of Annino, Leningradskaya, Russian Federation; Wuxi Yilian LLC of Xiamen, Fujian, China / Alexis Uvarovis, Flee Ventures 4 of Belize; Vladimir Kiskov of Perm, Russian Federation; Konayem Temirtassova of Aktau, Kazakhstan; Kravtsov Alexander, Alexander Kravtsov of Khabarovsk, Khabarovskiy Kray, Russian Federation; Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Danilo Krasko of Lvov, Lviv Oblast, Ukraine. 2. The Domain Names and Registrars
The Domain Names and are registered with Binero AB.
The Domain Names and are registered with PDR Ltd. d/b/a PublicDomainR.
The Domain Names and are registered with 1API GmbH.
The Domain Name is registered with Gandi SAS.
The Domain Name is registered with B, Inc.
The Domain Names and are registered with Mesh Digital Limited.
The Domain Name is registered with T, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 16, 2016, the Center transmitted by email to the abovementioned registrars a request for registrar verification in connection with the Domain Names. On March 17, 2016, PDR Ltd. d/b/a PublicDomainR 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 Domain Name and disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On March 17, 2016, Mesh Digital Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 17, 2016 1API GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 17, 2016, Gandi SAS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 24, 2016, T, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 29, 2016, Binero AB transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names and which differed from the named Respondent and contact information in the Complaint, and confirming that Swedish was the language of the Registration Agreement for those Domain Names. On April 1, 2016, B, Inc transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 1, 2016, providing the registrant and contact information disclosed by the registrars Binero AB, B Inc and PDR Ltd. d/b/a PublicDomainR, and inviting the Complainant to submit an amended Complaint. On April 1, 2016, the Center also sent a communication to the Parties stating that Swedish was the language of the Registration Agreement for the Domain Names and , and requesting that the Complainant provide either satisfactory evidence of an agreement between the Complainant and the Respondents that the proceedings should be in English; or, that the Complainant submit the Complaint translated into Swedish; or that the Complainant submit a request that English be the language of the administrative proceeding. The Respondents were also invited to make submissions in this regard. The Complainant filed an amended Complaint, which incorporated a request for English to be the language of the proceeding, on April 5, 2016. The Respondents did not reply.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Swedish, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 29, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 5, 2016. 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 engaged in 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. Its name is well known in the field of pharmaceuticals generally and in particular in the world of prescription drugs. A longer presentation is offered in Roche Products Ltd. v. PrivacyP / Stats Chernov,WIPO Case No. D2011-2096.
The Complainant has established rights in the trademarks ACCUTANE, BACTRIM and XENICAL. The Complainant has annexed to the Complaint proof of registered rights, such as international trademark XENICAL, Registration No. 612908, registration date December 14, 1993; international trademark ACCUTANE, Registration No. 840371, registration date December 6, 2004; and international trademark BACTRIM, Registration No. 349140, registration date August 20, 1968.
The evidence in the case file shows that most if not all of the Domain Names previously resolved to active websites of rogue online pharmacies. At the time of this decision, several Domain Names resolve to inactive websites. The Domain Names were registered between December 23, 2014 and December 14, 2015. 5. Parties’ Contentions A. Complainant
The Complainant has established rights in the trademarks ACCUTANE, BACTRIM and XENICAL. The Complainant has been the owner of the trademark XENICAL since 1993, which has been used without interruption. The Complainant holds worldwide trademark registrations for the XENICAL mark in connection with pharmaceutical preparation. The Complainant directly owns exclusive rights in the ACCUTANE mark. The Complainant is 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 owned trademark rights since at least 1968 in the BACTRIM mark.
The Complainant’s registered trademarks are reproduced in their entirety in the Domain Names. They form the dominant portion of the Domain Names. Additions to the trademarks comprised of descriptive words like “generic”, “for sale”, “online”, “buy”, “order”, and dosage strengths like “120mg” do nothing to minimize confusion. The risk of confusion should be considered with even greater care, says the Complainant, as the goods covered by the registration are pharmaceuticals, and the likelihood of confusion could cause death or physical harm.
The Respondents have no rights or legitimate interests in respect of the Domain Names. The websites connected to the Domain Names are being used to entice customers to rogue online pharmacies.
The Domain Names were registered and are being used in bad faith. The Respondents were aware of the ACCUTANE, BACTRIM and XENICAL trademarks when they registered the Domain Names. The Complainant has used these trademarks decades before the registration of the Domain Names. The trademarks are also well-known trademarks. The very incorporation of the trademarks in the Domain Names, as well as addition of terms descriptive of the Complainant’s industry and products, confirms the Respondents’ awareness of the ACCUTANE, BACTRIM and XENICAL trademarks. The Respondents deliberately registered the Domain Names in bad faith. The Domain Names are being used in bad faith to redirect Internet users to rogue pharmaceutical websites for the Respondents’ commercial gain. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1. Procedural Matters A. Language of the Administrative Proceeding
The Rules, paragraph 11(a), provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.” According to the information received from the registrars, the language of the Registration Agreement for the domain names is English, save and which are subject to a Registration Agreement in Swedish.
The Complainant submits that the language of the proceeding should be English, inter alia, because:
1) The Respondents are likely to be under common ownership or control of the criminal enterprise behind two former UDRP decisions. F. Hoffmann-La Roche AG v. Aleksandr Bannikov et al.,WIPO Case No. D2015-0066 (“Bannikov I”); and F. Hoffmann-La Roche AG v. Konayem Temirtassova et al.,WIPO Case No. D2015-0984 (“Bannikov II”). Bannikov I and Bannikov II were conducted in English without any objections;
2) The two relevant domain names ( and ) incorporate only English words or phrases and websites that are connected to these Domain Names were in English showing that the Respondents are capable of communicating in English;
3) The two relevant Domain Names have the same contact information as domain names which are subject to English registration agreements;
4) Having to conduct separate parallel proceedings in Swedish 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 Swedish. Further, given the Panel’s findings in relation to consolidation of the Respondents, 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 second in Swedish. The Panel notes that the relevant communications from the Center to the Parties were transmitted in English and Swedish. 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. B. Consolidation of the Respondent
Paragraphs 4(f) of the Policy and 10(e) of the Rules allow, at the discretion of the panel, for the consolidation of multiple UDRP disputes. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. 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 of respondents 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) of the Policy 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 individually named respondents.
The said principles were applied by the panel in Bannikov II.
The Complainant has provided evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity, or network, are somehow connected to each other, and are 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 Bannikov I and Bannikov II.
The Respondents failed to respond to the Complaint.
Accordingly, applying the abovementioned 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 evidence of such common control to be appropriate 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.
6.2. Substantive Issues A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademarks ACCUTANE, BACTRIM and XENICAL.
The test for confusingly similarity involves the comparison between the trademark and the domain name itself such that the trademark would generally be recognizable within the domain name. In this case the Complainant’s registered trademarks are reproduced in their entirety in the Domain Names. Where there are additions to the trademarks, the additions comprise of descriptive words like “for sale”, “generic”, “online”, “buy” and dosage strengths like “120mg”. The addition of such prefixes and suffixes add to rather than reduce 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 various Top-Level Domain suffixes.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has not authorized the Respondents to use its trademarks or register the Domain Names. 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. Consumer alerts have been issued in respect of the online pharmacies at the websites to which the Domain Names resolve. The Respondents’ intention seems to be 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 finds that the Complainant has made out a prima facie case. The Respondents have not responded and the Panel is unable to conceive how the Respondents could 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. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondents were aware of the ACCUTANE, BACTRIM and XENICAL trademarks when they registered the Domain Names. The Complainant has used these trademarks decades before the registration of the Domain Names. The trademarks are also well known. The very incorporation of the trademarks in the Domain Names as well as addition of terms descriptive of the Complainant’s industry and products confirm the Respondents’ awareness of the Complainant’s trademarks.
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 active resolved to 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 Internet users for commercial gain by misleading them into believing that the websites at the Domain Names are authorised by or somehow connected to the Complainant;
3) As evidenced above in the sections relating to the consolidation of the Respondents, the Respondents have gone to great lengths to hide their identity or identities in order to avoid the legal consequences of their activities;
4) Even in the case of the websites which are now inactive or give the appearance of being under maintenance, the Panel is not prevented from making a finding of bad faith. The apparent lack of active use of a domain name without any active attempt to sell or to contact the trademark 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 a domain name was used in bad faith given the circumstances surrounding registration, and vice versa. In this case, inferences of bad faith use are found in the fact that the Respondents are clearly attempting to hide their identities, the Complainant’s trademarks are well known trademarks 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, and that the Domain Names and be cancelled.
Mathias Lilleengen
Sole Panelist
Date: May 13, 2016
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