WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Isakov Aleksandr
Case No. D2012-1449
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Isakov Aleksandr of Kharkov, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <xenicalmg.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. in accordance with the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), paragraph 4(c), and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 2(b) and 3(b)(xii), the Complainant copied respectively the Registrar and Respondent on the original transmittal of the Complaint to the Center. On July 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2012, the Registrar transmitted by email to the Center its verification response that provided inconsistent information as to the identity of the registrant of the disputed domain name. Upon further investigation prompted by inquiries from the Center, the Registrar checked its server logs and determined that on July 18, 2012, the day prior to the Registrar’s response to the Center’s request for verification, Isakov Aleksandr had transferred the disputed domain name to Shabaev Vasilii. While nonetheless locking the disputed domain name from further transfer, the Registrar declined to cancel the transfer and to restore Isakov Aleksandr as the Registrant of the disputed domain name, even though the transfer to Shabaev Vasilii occurred after Isakov Aleksandr had received notice of this pending administrative proceeding as, in reference to paragraph 8(a) of the Policy, the Registrar explained that it “[does] not feel qualified to try to give legal interpretation of ICANN policies besides what is explicitly written”. The Registrar then requested the Center to provide the Administrative Panel with the record of events in this case in order to determine the proper Respondent, and additionally indicated that, if “requested by the Center, ICANN or the Panelist to revert back WhoIs data of the Registrant, [the Registrar] will gladly comply with the request” The Center thereafter sent an email communication to the Complainant on August 6, 2012 identifying Shabaev Vasilii as the current registrant listed by the Registrar, providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 7, 2012, adding Shabaev Vasilii as an additional Respondent.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents named in the amended Complaint, namely Isakov Aleksandr and Shabaev Vasilii, of the Complaint and amended Complaint, and the proceedings technically commenced, in accordance with paragraph 4(c) of the Rules, on August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ defaults on August 28, 2012.
The Center appointed William F. Hamilton as the sole panelist in this matter on September 7, 2012. 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 company duly organized under the laws of Switzerland having its principal place of business in Basel, Switzerland. The Complainant is one of the world’s leading pharmaceutical companies. The Complainant’s mark XENICAL is registered in a multitude of countries worldwide. XENICAL is the well-known trade name of an oral prescription weight loss medication indicated for the treatment of obesity.
The disputed domain name was first registered June 21, 2012.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the XENICAL mark, that the Respondents have no rights or legitimate interests in the XENICAL mark or the disputed domain name, and that the disputed domain was registered and is being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A number of threshold questions regarding the proper Respondent are initially presented. The facts are clear. On Tuesday, July 17, 2012, the Complainant emailed the Complaint (and Annexes) to the Center with copies to the Registrar and to the Respondent. The next day the Respondent Isakov Aleksandr transferred the disputed domain to Shabaev Vasilii. The Registrar locked the disputed domain name on July 19, 2012, but the transfer to Shabaev Vasilii had already been accomplished.
The first question is whether the Respondent violated the Policy by transferring the disputed domain name to Shabaev Vasilii on July 18, 2012, after receiving an email from the Complainant on July 17, 2012, attaching a copy of the Complaint. The Policy provides:
“8. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.”
Paragraph 4 of the Policy refers to mandatory administrative proceedings, such as this proceeding administered by the Center, and advises the registrant what to do “when [the registrant] receive[s] a complaint.” See Policy at paragraph 4(c).
The uncontroverted evidence before the Panel demonstrates that the Respondent Isakov Aleksandr transferred the disputed domain name after receiving notice of this proceeding and therefore during a “pending administrative proceeding”. The fact that Isakov Aleksandr managed to obtain the transfer before the Registrar locked the disputed domain name or (should it have been the case) before the Center provided the registrar with a request for verification is of no significance. Whether a transfer is precluded under paragraph 8(a) of the Policy has nothing to do with the alacrity of a registrar in locking a disputed domain name. Paragraph 8(a) of the Policy is directed to the registrant. The issue is simply whether the Respondent Isakov Aleksandr violated paragraph 8(a) of the Policy when making the transfer of the disputed domain name to Shabaev Vasilii. The Panel answers this question in the affirmative, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683 (“To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding"). See also Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489.
The Center requested the Registrar to consider whether the transfer of the disputed domain name should be cancelled and whether registration of the disputed domain name should be restored to Isakov Aleksandr. The Registrar responded that a restoration was physically possible but would defer to directions from the Panel before effecting any such reversion or cancellation of the transfer pursuant to paragraph 8(a) of the Policy. Generally speaking, under the present circumstances, the Panel considers such restoration of the original registrant details by the relevant registrar to be an appropriate method under the Policy in the event a registrant transfers a disputed domain name in violation of paragraph 8, while the UDRP proceeding remains pending and until such time as a panel decision or further instructions would be forthcoming. Further to the request of the concerned Registrar, the Panel hereby directs the Registrar to cancel the transfer of the disputed domain name and to restore the contact details of the disputed domain name to Isakov Aleksandr as were in effect on July 17, 2012, the time at which the Panel determines that Isakov Aleksandr first received notice of this administrative proceeding. The Panel determines Isakov Aleksandr is the proper Respondent in this administrative proceeding. The Panel further determines that Shabaev Vasilii is removed from this proceeding as a formal Respondent. It is noted, however, that Shabaev Vasilii received notice of this proceeding and did not respond to the Complaint or appear to defend any interest in the disputed domain name.
Having determined the proper Respondent is Isakov Aleksandr, the Panel now proceeds to the substantive analysis of the Complaint. All subsequent references to “the Respondent” herein refer to Isakov Aleksandr only.
In order for the Panel to grant the remedy of transfer of a domain name to a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has little difficulty concluding that the disputed domain name is confusingly similar to the Complainant’s XENICAL mark. The disputed domain name wholly incorporates the XENICAL mark and only adds the generic prefix “mg”. “Mg” is a standard abbreviation for “milligram,” a common measure of dosage. The mere addition of such a common or generic suffix has long been held to be insufficient to avoid confusing similarity. Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638 (citing Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252 “[T]he mere addition of a common or generic word such as ‘beads’ to a registered trademark has consistently been deemed insufficient to avoid confusing similarity between the domain name and the complainant's trademark”); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark); Pfizer Inc. v. Shawn Vink, WIPO Case No. D2011-0635 (transferring <buy-viagra.com>). Moreover, there is an extensive history of UDRP cases transferring disputed domain names that attempt to exploit a confusing similarly with a branded pharmaceutical product, including over a hundred UDRP cases involving XENICAL. See e.g. F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin / Denis A Denisov, WIPO Case No. D2012-1503. See generally “https://www.wipo.int/amc/en/domains/search/index.html” (search “XENICAL”).
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent lacks any rights or legitimate interests in the XENICAL mark or the disputed domain name. Before the transfer to Shabaev Vasilii, the disputed domain name resolved to a website established for the commercial purpose of selling pharmaceutical products. The Complainant specifically disavows any commercial or other relationship with the Respondent that would entail any authorization from the Complainant for Respondent to use the XENICAL mark or register the disputed domain name. It does not appear that the Respondent has conducted any legitimate business under the disputed domain name or the XENICAL mark. The Respondent has not come forth with any evidence of any rights or legitimate interests in the XENICAL mark or the disputed domain name. Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location;
The Respondent clearly incorporated the Complainant’s XENICAL brand into the disputed domain name for commercial gain in an effort to attract Internet users to its website. Buttressing this obvious conclusion is the fact that the Respondent did not respond to the Complaint, but upon receiving notice of the Complaint took “cyber-flight” and attempted to transfer the disputed domain name in violation of the Policy. The disputed domain name now resolves to the Google Blogger “sign-in” page. This new resolution is simply additional evidence to the Panel of the Respondent’s effort to mask the underlying bad faith registration and constitutes continued bad faith use of the disputed domain name. The disputed domain name has nothing to do on its face with Google’s Blogger services. Further evidence of bad faith is demonstrated by the google email contact addresses of the Respondent and Shabaev Vasilii that consist of a series of digits plus @gmail.com and that the physical contact locations provided by the Respondent and Shabaev Vasilii are non-existent. On the evidence presented, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith to exploit the XENICAL brand and then when noticed of this proceeding engaged in cyber-flight by transferring the disputed domain name to an accomplice and temporarily changing the website that the disputed domain name resolves to in order to make the transfer appear innocuous.
The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) and 8 of the Policy and 15 of the Rules, the Panel orders (1) that the transfer of the disputed domain name to Shabaev Vasilii be cancelled by the Registrar, (2) that the contact information and registrant of the domain name <xenicalmg.com> be restored by the Registrar to Respondent Isakov Aleksandr as of July 17, 2012, and (3) that the domain name <xenicalmg.com> then be transferred to the Complainant.
William F. Hamilton
Dated: September 23, 2012