Svenska Örtmedicinska Institutet AB v. Swedish Herbal Institute, Ltd

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