WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Walt Moore
Case No. D2011-2119
1. The Parties
Complainant is Hoffmann-La Roche Inc., San Francisco, California, United States of America, represented by the law firm Lathrop & Gage LLP, United States of America.
Respondent as listed in the contact information for the disputed domain name is Walt Moore, Pagosa Springs, Colorado, United States of America. The identity of the actual owner of the disputed domain name is discussed further in Sections 3 and 6 below.
2. The Domain Name and Registrar
The disputed domain name <xenical120mg.net> is registered with Center of Internet Names in Ukraine dba UKRNAMES (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2011. On December 5, 2011, the Center transmitted by email to Center of Internet Names in Ukraine dba UKRNAMES a request for registrar verification in connection with the disputed domain name. On December 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that “Moore Walt” is listed as the registrant and providing the details as the administrative, billing, and technical contact.
On December 8, 2011 the Center notified Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On December 9, 2011 Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (“We refer you to Paragraph 10 of the complaint, wherein the Complainant requests that the proceeding go forward in English.”) providing the reasons for such request. Respondent did not provide any comments in respect to the language of the proceedings.
The Center verified that the Complaint together with the Request that English be the language of the proceedings 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 Respondent, by email and post courier to the addresses specified in the contact information provided by the Registrar, of the Complaint, and the proceedings commenced on December 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2012. No official Response was received.
However, on December 15, 2011 an email was received by the Center from one “Walt Moore,” with an email address differing from the one specified in the contact information, stating the following
I received this notice about a domain dispute. You have probably contacted the wrong person. 1.) I have no email address of […]@gmail.com, 2.) My business number is not […]. This is a New York number
3.) When I look up xenical120mg.net it is a diet pill which I have never heard of. 4.) I live in a small town and do not live at […], Pagosa Springs, CO. However the UPS delivery man figured there was a Walt Moore in Pagosa Springs so he delivered it to our home address which we never receive mail at. So in conclusion I do not know what this is all about. So send me the complaint so I can see why this is sent to me.
Dr. Walt Mooire”
Dr. Moore (who corrected the spelling of his surname in the second email) sent a further email on December 20, 2012, stating
Thank you for your reply to my email. You have the wrong person. I tried the phone number and of course it is disconnected. Again that is not my email address or phone number. You need to do further investigation to find out who the real person is because it is not me.
Dr. Walter S. Moore”
The Center replied by acknowledging the emails and stating that the communications would be forwarded to the Panel as part of the case file and for the Panel for consideration of the claims.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted his 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
Complainant and its affiliated companies (which the Panel refers to collectively as “Complainant”) are an international pharmaceutical enterprise. Among its many products is Xenical, a pharmaceutical product used for weight reduction and long-term weight management. Complainant holds many trademarks duly registered in the United States and around the world for XENICAL, dating back to the 1990s. Among Complainant’s websites is “www.xenical.com”. Xenical generated hundreds of millions of dollars in sales in 2011.
Respondent registered the disputed domain name on August 23, 2011. The disputed domain name now resolves to an error message, but at one time it resolved to a site at which numerous pharmaceutical products, including a generic form of XENICAL and other treatments for weight loss and weight loss management, were offered for sale. This web page, attached as an annex to the Complaint, has text in the English language only and prices in dollars ($) only.
Complainant sent an email cease-and-desist letter to Respondent on November 21, 2011, but received no reply.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its registered XENICAL trademark, that Respondent lacks rights or a legitimate interest in the disputed domain name, and that Respondent registered and used the disputed domain name in bad faith.
The only communications received by the Center in response to the Complaint are quoted in full in Section 3 above.
6. Discussion and Findings
A. Jurisdiction. The Panel first addresses whether the Center has “employ[ed] reasonably available means calculated to achieve actual notice to Respondent, Rules, paragraph 2(a), for if the Center has not discharged this duty as Provider the Panel lacks jurisdiction to address the merits.
Paragraph 2(a) further provides:
Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's WhoIs database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
If the Dr. Moore who replied to the Center is in fact the owner of the disputed domain name, “actual notice” was achieved. If (as appears the more likely situation) he is not, the Center performed the requisite three steps set forth in the Rule, thus satisfying the alternative to actual notice prescribed in the Rule. The Panel finds that he has jurisdiction to decide this administrative proceeding.
B. Language of the Proceeding.
Having assured itself of jurisdiction, the Panel turns first to Complainant’s request that this proceeding be conducted in the English language.
Paragraph 11(a) of the Rules reads as follows:
11. Language of Proceedings
(a) 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.
The Rule makes clear that the Panel has the ultimate authority to determine the language of the proceeding. After due deference to the first choice specified in the Rules, Russian, the language of the registration agreement, the Panel agrees with Complainant that English is appropriate in the circumstances of this case. The content of the website previously maintained at the disputed domain name is entirely in English, with prices in dollars. Respondent (whoever or whatever it is) specified to the Ukrainian registrar he selected an address in the United States, in contact information in Latin rather than Cyrillic characters. Plainly Respondent (whoever or whatever it is) understands English. Respondent has not objected to Complainant’s request for proceedings in English. Although a respondent’s default does not automatically result in a decision for the complainant, its non-reply to a procedural application by Complainant may be deemed acquiescence. Any possible prejudice to Respondent from proceeding in English, which the Panel deems highly unlikely, is obviated by the Center’s notification of the Complaint, which included the request for proceedings in English, in Russian as well as English.
C. Paragraph 4(a) of the Policy.
Complainant has met its burden of proof under each of the three requirements of paragraph 4(a) of the Policy. Indeed this case is a textbook example of cybersquatting. The disputed domain name is identical to the dominant feature of Complainant’s registered marks, the record reveals no rights or legitimate interests of Respondent (whoever or whatever it is) in the disputed domain name, and the evidence furnished by Complainant demonstrates that Respondent falls clearly within the examples of bad faith set out in paragraph 4(b)(iv) of the Policy. The content at the page to which the disputed domain name resolved immediately after registration demonstrates Respondent’s actual knowledge of Complainant and its XENICAL marks, so there is no question that Respondent (whoever or whatever he is) both registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <xenical120mg.net> be transferred to Complainant.
Richard G. Lyon
Date: January 31, 2012