Healthcare giant, F. Hoffmann-La Roche (Roche) filed for and was awarded the transfer of 74 domain names that had been registered by multiple individuals. Roche had filed with the World Intellectual Property Organization (WIPO), for the cancellation and transfer of domains that included Roche’s pharmaceutical product names Accutane, Bactrim and Xenical. The domains were allegedly held by members of a criminal network and a known cybersquatter.
The most interesting aspect of this case is that Roche was able to combine several different respondents under a single complaint. The domains were in the name of more than half a dozen different individuals allegedly located in Russia and China. The WIPO terms allow for the Consolidation of Proceedings where either the domains are owned by the same individual or entity, or that the complainant can demonstrate that the disputed names or websites that the domains resolve to are subject to common control and that the panel determines that consolidation would be procedurally efficient, fair and equitable to all parties. Respondents failed to file any response.
The second issue that the WIPO panel faced was the determination of which language should be used. The panel determined that English should be the language of the proceeding based upon the determination that the Respondents were part of a criminal enterprise in an earlier domain dispute which was conducted in English without any objections, the domain names incorporate only English words and phrases, showing that the Respondents should be capable of communicating in English, several of the domains had identical contact information which was subject to English registration agreements, the fact that the proxy server for the domains was located in China does not necessarily mean that the registrants were located in China, and that to conduct separate parallel proceedings in Chinese would serve to add costs and delays to the process. Finally, all communications regarding the complaint were sent to the parties in both English and Chinese.
The panel confirmed that the domains were identical or confusingly similar to Roche’s trademarks, that the respondents had no right or legitimate interest in the trademarks and that the domains were registered and used in bad faith. The link to the WIPO decision can be found here.