Most UDRP disputes involve only one or two domain names. Some involve a few more and dispute providers charge slightly higher fees in these instances. However, you know you’re dealing with something major when the number of domains in your case place you into the “please contact us for an estimate” category of dispute provider fees.
In a recent case brought by the pharma company F. Hoffman-La Roche, 154 domains were accused of infringing its ACCUTANE, ROACCUTANE, XENICAL, and BACTRIM brands. Unfortunately for the Complainant, many of these domains listed different owners in their Whois records and some used a Chinese registrar which operates only in the Chinese language. This raises two questions about how to apply UDRP rules: i) in what language should the case proceed?; and ii) can you consolidate so many different domain owners into a single case?
Under UDRP Rules, What Language Should Be Used?
The Panel addressed the language issue first and explained that, under UDRP rules, a case is usually supposed to be handled in the language of the registration agreement between the Respondent and the registrar. In this case, some domains were registered under English language agreements but many were registered under agreements in Chinese.
The decision next pointed out that the rules allow some leeway for panels to exercise their discretion and decide that a case may be handled in a language different from that of the registration agreement if the circumstances so warrant. Past UDRP decisions have looked to factors which indicate that the respondent can understand and use the alternate language proposed by the complainant and the Panel here cited some of those.
It was noted that:
- most of the disputed domains resolve to websites in English
- the Whois records for many of the domains listed addresses in the United States – a country where English is the primary language, and
- many of the disputed domains were formed by copying one of Complainant’s trademarks and appending to it generic words in English (ex. wheretobuybactrim.com).
Based on all of these factors, the Panel decided that the Respondents can function in the English language and so it was decided that this would be the language of the case.
The second procedural issue of consolidation was then discussed.
How Many Respondents is Too Many?
Under UDRP rules, a single complaint may be filed against multiple domains when those domains are under common ownership or control. If multiple domains are owned by different, unrelated people, separate complaints against each must be filed.
In this case, the owners listed for most of the disputed domains are different. However, through some time-consuming sleuthing, the Complainant was able to offer evidence that they are all part of a clever scheme set up by one organized crime group.
Amongst the disputed domains are a few which are described as “target” sites – those at which goods are actually sold. However, the majority of the domains resolve to “feeder” sites which contain links directing users to one of the target sites. In an attempt to hide its tracks, this group registered the various domains using the names, addresses, and phone numbers of unsuspecting victims of identity theft. By pointing to such features as common email addresses, similar website layout and content, and the use of very similar “customer service” phone numbers on many of the sites, the Panel concluded, “on the balance of probabilities, the disputed domain names are controlled or under the common ownership.”
In the end, all 154 domains were ordered to be transferred to F. Hoffman-La Roche based on the Respondent’s bad-faith misuse of the various trademarks. This case demonstrates that, even well-made plans of cybersquatters can often blow up in their faces by a smart and determined complainant.
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