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WIPO Arbitration and Mediation Center
ADMINISTRATIVE
PANEL
DECISION
Svenska
Örtmedicinska
Institutet
AB v.
Swedish
Herbal
Institute,
Ltd
Case
No. D2003-0509
1. The Parties
The Complainant is Svenska Örtmedicinska Institutet AB, of Västra Frölunda, Sweden, represented by Anna Påhlsson, Esq. and Lars-Erik Ström, Esq. of Advokatfirman Konsultbyrån för Marknadsrätt of Malmö, Sweden.
The Respondent is Swedish Herbal Institute, Ltd of York Habor, Maine, United States of America, represented by James B. Bartlett, Esq. of York Habor, Maine, United States of America.
2. The Domain Names and Registrars
The disputed domain names are <adaptogen.com> and <arcticroot.com>, registered with Intercosmos Media Group d/b/a directNIC.com; and <chisandra.com> and <kanjang.com>, registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2003. It disclosed the existence of prior court proceedings between the parties and that arbitration is pending. On June 27, 2003, the Center transmitted by email to Intercosmos Media Group and to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue.
On June 27, 2003, Intercosmos Media Group transmitted by email to the Center its verification response confirming that "Swedish Herbal Institute" is listed as the registrant of the domain names <adaptogen.com> and <arcticroot.com>, with Mr. Richard De Soto as contact, and providing other contact details for the administrative, billing, and technical contacts.
On July 9, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent "Swedish Herbal Institute, Ltd" is listed as the registrant of the domain names <chisandra.com> and <kanjang.com>, with Mr. Richard De Soto as billing contact, and providing other contact details for the administrative and technical contacts.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 9, 2003. The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceeding commenced on July 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2003. A Response and Motion to Terminate and/or Stay the Proceeding was filed with the Center that day.
The Center appointed Alan L. Limbury as the Sole Panelist in this matter on August 4, 2003. 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.
The language of the proceeding was English, being the language of the registration agreements.
The motion to terminate and/or stay this proceeding
The Respondent asserted that this proceeding circumvents orders of the Maine Federal District Court and the State of Maine, York County Superior Court, under which certain claims by the Complainant arising out of a 1996 Distribution and Licensing Agreement were referred to arbitration and are presently pending before an arbitrator under the auspices of the American Arbitration Association International Center for Dispute Resolution ("ICDR"). A motion in that arbitration was filed simultaneously with the Response in this proceeding, seeking an injunction to restrain the Complainant from continuing this proceeding.
In light of the pending motion and arbitration before the ICDR, the Respondent requested the Panel, pursuant to Rules 10, 17 and 18, to terminate or stay this proceeding pending the decisions of the ICDR arbitrator on the Respondent’s motion for an injunction and on the claims and counterclaims filed in that arbitration.
The Respondent described the Response as "a Preliminary Response as required by Rule 5" and requested permission to supplement it in the event the Panel does not grant the motion to terminate and/or stay.
By letter dated August 5, 2003, the Complainant submitted reasons why it contended that motion should be dismissed. By letter dated August 6, 2003, the Complainant submitted to the Center a copy of the ICDR arbitrator’s decision, made on August 5, 2003, on the Respondent’s motion for a temporary restraining order to restrain the Complainant from continuing with this proceeding. The Panel received these unsolicited submissions in order to determine whether to admit them into evidence and, finding them relevant and that the Complainant could not reasonably have been expected to anticipate the Respondent’s motion nor to have included the material in its Complaint, decided to admit them.
The ICDR arbitrator dismissed the motion for a temporary restraining order upon the ground that:
"Respondents have not shown a likelihood of success on the merits. Based on the materials reviewed by the Arbitrator with respect to the request for a temporary restraining order, the Arbitrator finds the Respondents have not demonstrated a likelihood of success in showing that WIPO does not have jurisdiction over the domain name disputes that have been submitted to WIPO by Claimants. It appears from those materials that WIPO has such jurisdiction through ICANN’s Uniform Domain Name Dispute Resolution Policy, since in order to register a domain name, an entity is required to agree to mandatory arbitration pursuant to that policy."
The Policy is incorporated by reference into the registration agreement between each domain name registrant and registrar - paragraph 1. Domain name registrants are required to submit to a mandatory administrative proceeding if a Complainant, in compliance with the Rules, makes to an applicable Provider the assertions set forth in paragraph 4. The Panel finds that the Complainant has made such assertions to the Center, being an applicable Provider, in compliance with the Rules and that the Policy is incorporated into the relevant registration agreements. It follows that the Panel has jurisdiction to determine this dispute.
On August 12, 2003, by Procedural Order No. 1, the Panel dismissed the Respondent’s motion for termination and/or stay of this proceeding for the following reasons:
"It appears the Respondent has registered, in the United States, trademarks corresponding to the disputed domain names. One of numerous issues before the ICDR Arbitrator is whether the Respondent is entitled, as against the Complainant, to retain ownership of those registrations. That issue is relevant to the issues of legitimacy and bad faith in this proceeding.
"Rule 18(a) provides:
‘In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.’
"Despite
the relevance
to this
proceeding
of the trademark
ownership
issue, the
ICDR arbitration
is not a
legal proceeding
"in
respect
of a domain-name
dispute."
Accordingly
Rule 18(a)
has no application
here. The
Panel is
therefore
required
to determine
this proceeding
with due
expedition
– See Rules
10(c) and
15(b); the
Final Report
of the WIPO
Internet
Domain Name
Process,
April 30, 1999,
p.189; World
Publications,
Inc. v.
World Pen,
Seattle
Pen, Inc.,
and Seattle
Pen, Inc.
d/b/a World
Pen,
WIPO
Case No.
D2000-0736;
Ha’aretz
Daily Newspaper
Ltd. v.
United Websites,
Ltd., WIPO
Case No.
D2002-0272
and W.
& G.
Foyle Limited
v. Foyle’s
Books Limited,
WIPO
Case No.
D2000-1544.
"Rule 17(b) requires the Panel to terminate the proceeding if, before the decision is made, it becomes unnecessary or impossible to continue for any reason. There are no circumstances which justify termination under this Rule."
Further procedural steps
Pursuant to Rules 10(a), (b) and (c) and Rule 15(b), the Panel directed the Respondent, within 10 days of being notified of the Procedural Order, to submit to the Center any further submissions and evidence it wishes to provide by way of Supplementary Response and extended the time for the delivery of the Panel’s decision until further order.
On August 22, 2003, the Respondent filed a Supplemental Response pursuant to the Procedural Order.
On August 27, 2003,
the Complainant
filed an
unsolicited
Reply, which
the Panel
received
in order
to determine
whether
to consider
it in making
its determination.
Many Panels
have held
that, under
the Rules,
additional
submissions
are inappropriate
except in
the rarest
of circumstances,
such as
discovery
of evidence
not reasonably
available
to the submitting
party at
the time
of its initial
submission
or arguments
by the respondent
that the
complainant
could not
reasonably
have anticipated:
CRS Technology
Corp. v.
CondeNet,
Inc.,
NAF Case
No. FA0002000093547;
Plaza Operating
Partners,
Ltd.; Document
Technologies,
Inc. v.
International
Electronic
Communications,
Inc.,
WIPO
Case No.
D2000-0270;
Universal
City Studios,
Inc. v.
G.A.B. Enterprises,
WIPO
Case No.
D2000-0416;
Wal-Mart
Stores,
Inc. v.
Richard
MacLeod
d/b/a for
Sale,
WIPO
Case No.
D2000-0662;
Electronic
Commerce
Media, Inc.
v. Taos
Mountain,
NAF Case
No. FA0008000095344;
Parfums
Christian
Dior S.A.
v. Jadore,
WIPO
Case No.
D2000-0938;
Viz Communications,
Inc. v.
Redsun dba
www.animerica.com
and David
Peneva,
WIPO
Case No.
D2000-0905
and Goldline
International,
Inc. v.
Gold Line,
WIPO
Case No.
D2000-1151.
The Complainant’s Reply addresses issues raised in the Supplementary Response that the Complainant could not reasonably have been expected to anticipate. Accordingly the Panel decided to consider it.
On August 31, 2003, the Panel extended the time for the provision of its decision to the Center to September 1, 2003.
4. Factual Background
Since 1975, the Complainant has produced and marketed herbal products for medicinal use. It is the registered proprietor of the following registered trademarks:
ADAPTOGEN, registered in Sweden (1976); Denmark (1980); United States of America (1982); Germany (1998) and Norway (1998);
ARCTICROOT, registered in Sweden (1994); Germany (1998); Norway (1999); Iceland (2002) and Finland (2002);
CHISANDRA, registered in Sweden (1978); Denmark (1984); Finland (1985); Germany (1998) and Norway (1998);
KANJANG, registered in Sweden (1978); United Kingdom (1979); Denmark (1980); Canada (1983); Finland (1985); Norway (1985); Benelux (1986); France (1986); Germany (1989); United States of America (1990); the European Community (1999) and South Africa (2002).
The disputed domain names were registered by the Respondent as follows: <adaptogen.com> on September 18, 1996; <chisandra.com> on August 12, 1999; <kanjang.com> on August 12, 1999 and <arcticroot.com> on July 5, 2001.
5. Parties’ Contentions
A. Complainant
Identity/ confusing similarity
The disputed domain names are identical to the Complainant’s trademarks, except for the gTLD ".com."
Legitimacy
The Respondent does not have a legitimate interest in the disputed domain names even though [it] is the owner of trademark registrations of marks resembling them.
The Complainant’s principal owner and chairman is Mr. Georg Wikman. In about 1992, Mr. Wikman and an associate formed a New York Corporation called Swedish Herbal Institute Ltd. ("SHI-NY"). In 1993, Mr. Wikman was introduced to Mr. De Soto, to explore the possibility of cooperation in marketing the Complainant’s products in the United States. The Complainant entered into a contractual relationship with Mr. De Soto under which the parties jointly owned SHI-NY, with Mr. Wikman and Mr. De Soto each holding half the stock. In 1993, Mr. De Soto became President of SHI-NY and his wife Treasurer.
On November 8, 1993, a Distribution Agreement was executed between the Complainant as supplier and SHI-NY, as distributor, relating to products that included "Arctic Root," "Chisandra-Adaptogen" and "Kan Jang."
After 1993, Mr. De Soto formed a series of companies, all employing the Complainant’s registered business name Swedish Herbal Institute, which entered into various distribution agreements with the Complainant. One such company was the Respondent, a corporation registered in Maine on December 3, 1997. Prior to its registration, Mr. De Soto conducted business in the name Swedish Herbal Institute.
On June 26, 1996, as President of SHI-NY, Mr. De Soto transferred United States trademark registrations for marks resembling the disputed domain names from that company to the Respondent without the Complainant’s knowledge. At the time the Respondent was not incorporated. Although the transfers were registered by the United States Trademark Office, they were invalid and fraudulent and afford no basis for a legitimate interest in the disputed domain names.
That same day, SHI-NY was dissolved by the State of New York for failure to file its taxes.
On August 20, 1996, the Complainant signed a distribution contract with the Respondent (not then incorporated) at the request of Mr. De Soto. In 1998, an amendment was made to the 1996 Agreement. The commercial relationship between the Complainant and the Respondent terminated in September 2000.
None of the agreements authorized the Respondent to register the Complainant’s trademarks in its own name nor to register the disputed domain names, nor has the Complainant otherwise permitted the registration of the disputed domain names. The Respondent was aware of the Complainant’s trademark rights when it registered the disputed domain names.
Bad faith registration and use
The disputed domain names are being used by the Respondent for the purpose of selling products with the same names as those sold by the Complainant under its trademarks, but which are of lesser quality and are of different origin than those sold by the Complainant.
By using the disputed domain names, the Respondent has intentionally attempted to attract Internet users, for commercial gain, to the Respondent’s own website, where competing goods are sold, by misleadingly creating a likelihood of confusion with the Complainant’s marks.
The Respondent also failed to respond to two "cease and desist" letters from the Complainant.
B. Respondent
Preliminary Response
The Respondent denies the jurisdictional basis of the Complaint and says this dispute should have been properly filed as part of the current ICDR arbitration.
The Respondent denies that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has sole rights, pointing to the 1996 Distribution and Licensing Agreement, and the 1998 amendment thereto. Based on the established commercial relationship between the parties and the terms of their agreement, the Respondent denies any misrepresentation as alleged in the Complaint.
The Respondent says it has rights and legitimate interests in respect of the disputed domain names as set forth in the 1996 and 1998 Agreements.
The Respondent denies improper registration or misappropriation of trademarks or trade names and misleading product labeling, asserting these issues are the subject of the ICDR arbitration, as are the Complainant’s statements concerning the parties "prior" relationship.
The Respondent denies bad faith registration and use. The Respondent did reply to the Complainant’s "cease and desist" letters. The Respondent says it has used the disputed domain names in connection with a bona fide offering of goods and pursuant to the 1996 and 1998 Agreements. The Respondent says it has registered and used the disputed domain names in good faith in that it has not done any of the acts specified in paragraph 4(b) of the Policy.
The issue of the registration and use of the disputed domain names, like the issue of the registration and use of certain trademarks and trade names, is or should be an issue in dispute between the parties in the ICDR arbitration.
Supplementary Response
The Respondent repeated the points made above and added the following.
The Complainant relies on its alleged rights to certain trademarks as the basis for its claims regarding the disputed domain names. The status of the dispute over those trademarks and trade names is central to any decision regarding the Respondent’s rights to register and use the domain names. On August 19, 2003, the ICDR arbitrator dismissed the Complainant’s motion for declaratory judgment concerning its alleged ownership of the relevant trademarks and trade names.
The Complainant no longer owns most, if not all, of the disputed trademarks and trade names. By letter dated August 20, 2003, Mr. Tom Johnsson of "Örtmedicinska Institutet AB" of Malmö, Sweden, informed Mr. De Soto that:
"We bought both the trademarks and the registration for the Scandinavian countries 1 of January 2002. All of the trademarks has [sic] not been moved to us because of slow processing in some countries. But this is only a technical aspect. We are the rightful owner of the following trademarks: Kan Jang, Kan Jang Andro, Scisandra [sic], Chi San, Rysk rot and Artic [sic] Root, Rosenrot. We own it for Sweden, Denmark, Norway, Finland, Iceland…. Ps. As you know the owners of our company is 40% my company Nutrimed, 25% Dansk Droge, 10% private investors and 25% Georg Wikmans company SHIRD, Ds."
Internet search results on August 15, 2003, show that Mr. Johnsson’s company, Örtmedicinska Institutet AB is the owner of the trademarks ARCTIC ROOT, KAN JANG and SCHIZANDRA.
Just as the Complainant uses the subject domain names to support its alleged trademarks and trade names in Europe, the Respondent registered and uses the disputed domain names in the United States to support its rights and licenses to certain trademarks and trade names under its 1996 Agreement with the Complainant and/or pursuant to the rights the Respondent independently has as owner of the trademarks and trade names.
C. Complainant’s Reply
The Complainant is entitled to rely on its rights even after assignment, until the assignment is recorded. The Complainant’s claim of better right to the disputed domain names vis à vis the Respondent should be tried on grounds of the Complainant’s trademark registrations.
The fact that the Respondent was licensed certain trademark rights does not give the right to use the disputed domain names.
Örtmedicinska Institutet Sverige AB is a joint venture formed to market the Complainant’s products on the Swedish market. It has a contract with the Complainant for this purpose. The trademark rights for KAN JANG, SCHIZANDRA and ARCTIC ROOT for the Swedish market and the rights for ARCTIC ROOT for the Finnish and Icelandic markets have been assigned to the joint venture company and the assignments have been registered. Upon termination of co-operation, not founded in breach of contract on the part of the Complainant, those trademark rights are to be returned to the Complainant.
The Policy does not require a Complainant to have sole rights in a trademark. The 1996 Agreement acknowledges that the Complainant is the owner of the trademarks to be used with the products the subject of the Agreement.
The Respondent does not dispute the fact that it is not using any of the ingredients governed by the agreements for certain products it sells. Instead it is selling its own products, using the name and reputation of the Complainant.
The 1996 and 1998 Agreements do not give the Respondent any rights or legitimate interests in the disputed domain names, nor the right to register them.
The Respondent’s replies to the Complainant’s "cease and desist" letters have not been received.
The Respondent makes no bona fide offering of goods. Its behaviour is fraudulent.
Only a small part of the trademark rights assigned to Örtmedicinska Institutet Sverige has been transferred. The Complainant remains the owner of the remaining registrations and bases its claims on those registrations.
6. Discussion and Findings
The Respondent’s objection to the Panel’s jurisdiction is rejected for the reasons given earlier in Section 3.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
To secure transfer to it of the disputed domain names, the Complainant must prove the following - Policy, paragraph 4(a)(i-iii):
·
the domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
·
the Respondent has no rights or legitimate interests in respect of the domain names; and
·
the domain
names were
registered
and are
being used
in bad faith.
A. Identical
or Confusingly
Similar
Many cases
have established
that "essential"
or "virtual"
identity
is sufficient
for the
purposes
of the Policy:
The Stanley
Works and
Stanley
Logistics
Inc. v.
Camp Creek
Co., Inc.,
WIPO
Case No. D2000-0113,
Nokia
Corporation
v. Nokiagirls.com
a.k.a IBCC,
WIPO Case
No. D2000-0102;
America
Online,
Inc. v.
Anson Chan,
WIPO
Case No. D2001-0004;
Disney
Enterprises,
Inc. v.
John Zuccarini,
Cupcake
City and
Cupcake
Patrol,
WIPO
Case No.
D2001-0489;
Komatsu
Ltd. and
Komatsu
America
International
Company
v. RKWeb
Ltd.,
WIPO
Case No.
D2000-0995;
America
Online,
Inc. v.
Andy Hind,
WIPO
Case No.
D2001-0642
and The
Toronto-Dominion
Bank v.
Boris Karpachev,
WIPO
Case No.
D2000-1571.
The gTLD
".com"
is inconsequential
and has
no distinguishing
function.
The Respondent
does not
dispute
that the
domain names
are identical
to the trademarks
on which
the Complainant
relies.
Rather,
the Respondent
relies on
the fact
that the
Complainant
does not
have sole
rights to
those marks,
having assigned
some of
its marks
to the joint
venture
company.
However,
the Policy
does not
require
a Complainant
to establish
that it
has sole
rights.
Even ignoring
(without
deciding
that it
is necessary
to do so)
those trademarks
which the
Complainant
assigned
to the joint
venture
but of which
the Complainant
remains
for the
time being
the registered
proprietor,
the Panel
finds as
follows:
·
the
domain name
<adaptogen.com>
is identical
to the Complainant’s
trademark
ADAPTOGEN,
registered
in Sweden,
the United States,
Germany,
Norway and
Denmark
(there being
no evidence
before the
Panel of
any assignment
of this
mark to
the joint
venture);
·
the
domain name
<arcticroot.com>
is identical
to the Complainant’s
trademark
ARCTIC ROOT,
registered
in Germany;
·
the
domain name
<chisandra.com>
is identical
to the Complainant’s
trademark
CHISANDRA,
registered
in Germany;
and
·
the
domain name
<kanjang.com>
is identical
to the Complainant’s
trademark
KAN JANG,
registered
in the United Kingdom,
United States,
Canada,
Benelux,
France,
the European Community
and South Africa.
The Complainant
has established
this element.
B. Rights
or Legitimate
Interests
The Complainant
bears the
onus of
proof on
this, as
on all issues.
The Complainant
had a commercial
relationship
with Mr. De Soto
since 1993,
through
various
companies
established
in the United States
to market
the Complainant’s
products,
including
the Respondent.
The 1996
Agreement
was both
a distribution
and licensing
agreement,
which provided
for the
supply by
the Complainant
to the Respondent
of certain
herbal extracts
and for
their re-supply
by the Respondent
under its
own name
in North
and South America.
The ICDR
arbitrator
found it
to be undisputed
that those
extracts
were used
to produce
Kan Jang,
Chisandra Adaptogen
and Arctic Root
(Supplementary
Response,
Annex 10,
p. 2).
Article
VI of the
1996 Agreement
provided
(so far
as relevant):
"All
Products,
not sold
under private
label, covered
by the Agreement
are marked
and packed
with the
trademark
of the [Complainant].
This Agreement
does not
constitute
any transfer
of rights
of trademarks….
to the [Respondent],
except as
granted
in Article
XIX. Furthermore
the [Respondent]
is not allowed
to register
any trademark…in
connection
with the
Products
in his [sic]
own name
without
the prior
written
consent
of the [Complainant]."
Article
XIX amended
Article
VI by granting
to the Respondent
the exclusive
right to
manufacture,
package,
sell and
distribute
the Products;
by providing
for the
purchase
of minimum
annual quantities
of raw materials
necessary
to manufacture
such products
and by granting
to the Respondent
a royalty
free right
and license
in and to
the trademarks
of the Complainant
which are
necessary
or desirable
for the
packaging,
sale and
distribution
of the Product
[sic]. The
Article
also allowed
the Respondent
to license
others to
manufacture,
package,
distribute
and sell
the Products.
Article
IX provided
that upon
cancellation
of the agreement,
the Respondent
agreed not
to use "the
trademarks…of
the Products."
The Complainant
has asserted
that the
parties’
commercial
relationship
was terminated
in September 2000,
and the
Respondent
has not
denied this.
However,
the Complainant
has recently
submitted
to the ICDR
Arbitrator
that the
1996 Agreement
should be
terminated
(Supplementary
Response,
Annex X, p. 1).
The Panel
infers that,
despite
the termination
of the commercial
arrangement
between
the parties,
the 1996
Agreement
(as amended
in 1998)
remains
on foot.
This is
consistent
with the
Respondent’s
approach
to this
proceeding,
since it
relies heavily
on the 1996
Agreement
(as amended)
in support
of its contentions
on the issues
of legitimacy
and bad
faith.
The Panel
finds that
neither
the 1996
Agreement
nor the 1998
amendment
authorized
the Respondent
to register
the Complainant’s
trademarks
in its own
name nor
to register
the disputed
domain names
and that
the Respondent
was aware
of the Complainant’s
trademark
rights when
it registered
the disputed
domain names.
The Complainant
has alleged
that it
has not
otherwise
permitted
the registration
of the disputed
domain names.
These circumstances
are sufficient
to constitute
a prima
facie
showing
by the Complainant
of absence
of rights
or legitimate
interest
in the disputed
domain names
on the part
of the Respondent.
The evidentiary
burden therefore
shifts to
the Respondent
to show
by concrete
evidence
that it
does have
rights or
legitimate
interests
in those
names: Do
The Hustle,
LLC v. Tropic
Web, WIPO
Case No.
D2000-0624
and the
cases there
cited.
This is
the most
difficult
issue to
be determined
and it is
complicated
by the failure
of the Respondent
to provide
evidence
in support
of its assertions,
despite
having taken
advantage
of the opportunity
to file
a Supplementary
Response
following
the Panel’s
dismissal
of the Respondent’s
motion to
terminate
and/or stay
the proceeding.
Paragraph
4(c) of
the Policy
sets out,
without
limitation,
circumstances
which, if
proved,
establish
the registrant’s
rights or
legitimate
interests
to a disputed
domain name.
The Respondent
says it
has rights
and legitimate
interests
in respect
of the disputed
domain names
"as
set forth
in"
the 1996
and 1998
Agreements.
However,
those Agreements
make no
mention
of domain
names.
The Respondent
relies on
the circumstances
specified
in sub-paragraph 4(c)(i)
of the Policy:
"before
any notice
to you of
the dispute,
your use
of, or demonstrable
preparations
to use,
the domain
name or
a name corresponding
to the domain
name in
connection
with a bona
fide
offering
of goods
or services";
In support,
the Respondent
relies on
the 1996
and 1998
Agreements.
The Respondent
also denies
improper
registration
of any trademark
or trade
name, saying
it uses
the disputed
domain names
"to
support
its rights
and licenses
to certain
trademarks
and trade
names under
its 1996 Agreement
with Complainant
and/or pursuant
to the rights
Respondent
independently
has as owner
of the trademarks
and trade
names."
This submission
refers partly
to rights
under the
1996 Agreement
(as amended)
and partly
to claimed
rights of
independent
ownership.
Under the
1996 Agreement,
the Respondent
was to import
for resale
finished
trademarked
goods from
the Complainant
or to manufacture
for sale
finished
goods (or
license
others to
do so) from
raw materials
imported
from the
Complainant.
Had the
Respondent
confined
itself to
these activities,
it might
have been
able to
establish
a legitimate
interest
in the disputed
domain names:
"A
trader in
genuine
branded
goods can
have a legitimate
interest
in using
a domain
name incorporating
the brand
name for
a website
promoting
and selling
the branded
goods, provided
that the
trader does
not use
the domain
name so
as to cause
confusion,
for example
by indicating
that the
website
is approved
by the brand
owner"
Koninklijke
Philips
Electronics
N.V. v.
Cun Siang
Wang, WIPO
Case No.
D2000-1778.
Article
III (2)
of the 1996
Agreement
obliges
the Respondent
not to obtain
directly
competitive
Products
for resale
within the
contract
territory
from anyone
other than
the Complainant.
The Respondent
has not
denied the
Complainant’s
assertions
that the
Respondent
no longer
buys the
extracts
from the
Complainant
and that
the directly
competitive
products
sold by
the Respondent
under the
names Kan Jang,
Chisandra Adaptogen
and Arctic Root
through
websites
reached
by means
of the disputed
domain names
do not contain
ingredients
obtained
from the
Complainant.
Since the
object of
the 1996
Agreement
was to provide
a mechanism
for the
marketing
of the Complainant’s
products
and products
made from
the Complainant’s
raw materials,
the Panel
finds that
the Respondent’s
use of the
disputed
domain names
to sell
different
products
under the
names Kan Jang,
Chisandra Adaptogen
and Arctic Root
does not
constitute
a bona
fide
offering
of goods.
The amendment
made by
the 1998
Agreement
does not
alter this
conclusion.
As to independent
ownership,
the 1996
Agreement
prohibited,
without
the prior
written
consent
of the Complainant,
the registration
in the Respondent’s
own name
of the Complainant’s
trademarks,
yet the
Respondent
appears
to have
registered
in its own
name trademarks
corresponding
to the disputed
domain names.
It relies
on its asserted
independent
ownership
of those
marks to
demonstrate
the legitimacy
of its interest
in the disputed
domain names.
However,
the onus
having shifted
to the Respondent,
the Respondent
has not
established
that it
had the
Complainant’s
prior written
consent
to the registration
of those
marks. Under
these circumstances
the Panel
is unable
to place
any weight
on the fact
that the
Respondent
has registered
in its own
name trademarks
corresponding
to the disputed
domain names.
The Panel
finds that
the Respondent
has not
shown, by
concrete
evidence,
that it
has rights
or legitimate
interests
in the disputed
domain names.
The Complainant
has established
this element.
C. Registered
and Used
in Bad Faith
As already
mentioned,
the Respondent
has not
denied that
it is using
the disputed
domain names
in connection
with the
sale, under
the names
Kan Jang,
Chisandra Adaptogen
and Arctic Root,
of products
that do
not emanate
(either
as packaged
goods or
as raw materials)
from the
Complainant.
Such conduct
is not permitted
under the
1996 Agreement
(as amended)
and there
is no evidence
before the
Panel that
it has been
otherwise
authorized
by the Complainant.
The Panel
finds that
by so using
the disputed
domain names,
the Respondent
has intentionally
attempted
to attract,
for commercial
gain, Internauts
to its websites
by creating
a likelihood
of confusion
with the
Complainant’s
marks as
to the source,
sponsorship,
affiliation
or endorsement
of its websites
and of the
products
on its websites.
Pursuant
to paragraph
4(b)(iv)
of the Policy,
such use
constitutes
evidence
of both
the registration
and the
use of the
disputed
domain names
in bad faith.
The Complainant
has established
this element.
7. Decision
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
names <adaptogen.com>,
<arcticroot.com>,
<chisandra.com>
and <kanjang.com>
be transferred
to the Complainant.
Alan
L. Limbury
Sole Panelist
Dated:
August
31, 2003