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Recent Case Notes & Commentary

Can a Panel Order Transfer When a Domain Name Includes a Trademark Not Owned by the Complainant?

The issue arises where a domain name consists of two trademarks, one owned by the Complainant and the other by another company that is not a party to the proceedings. The Panel proceeds through the normal steps and finds that all 3 elements of the UDRP have been established and decides to order transfer of the domain name to the Complainant.

But doing so means that it is transferring a domain name that includes the trademark of another party and one who has not given consent to such a transfer, probably because it has not been asked to give that consent.

Should the Panel order transfer without the consent of the other trademark owner?

In the course of its decision, the Panel in the Hoffmann Case had decided a related issue, namely: was there confusing similarity with the Complainant’s trademark, although the domain name also included another trademark owned by a separate company that was not a party to the proceedings?

The domain name was <>. Both of Alli and Xenical are weight loss products. Xenical is owned by Hoffman-La Roche AG, but Alli, also a weight loss product is owned by a rival.

That issue was not difficult to decide and the panel found that the domain name was identical or confusingly similar to the Complainant’s trademark. As the panel said:

“It has also been consistently found that the inclusion of the trade marks of other parties in the domain name does not detract from this concept of confusing similarity: see Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 and F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699."

Although “alli” is also incorporated into the Domain Name, the Panel finds that the word “xenical” is nonetheless a prominent feature of the Domain Name.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.”

But then it came to the order to be made.

The Panel found that it could order transfer to Hoffman – La Roche AG although half of the domain name consisted of a trademark not owned by that company but by its rival.

It is true that there is no rule preventing such an order and presumably the proper principle to apply is the discretion that all courts and tribunals have to make an appropriate order.

But the Panel added the following qualification:

“The Panel notes that the Domain Name includes the ALLI trade mark, the rights in which belong to an individual or entity that is not party to these proceedings. In view of the fact that the Policy and the Rules are silent on the requirement of the consent of the owner of a trade mark incorporated in the Domain Name not belonging to the Complainant, the Panel considers that this is not an impediment to an order for the transfer of the Domain Name though the Panel notes that it would have been preferable for such consent to have been obtained prior to the filing of the Complaint but that the Complainant may yet seek to do this to protect their own position and claim to the Domain Name.”

It would be wise in the future to take these observations into account in framing a Complaint and marshalling the evidence to be adduced in support of it.


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