WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unigen Pharmaceuticals Inc. v. James Hoecker, Unicorp Ltd, c/o Unigenlifesciences.com
Case No. D2007-1705
1. The Parties
Complainant is Unigen Pharmaceuticals Inc., Lacey, Washington, United States of America, represented by Swanson & Bratschun, LLC, United States of America.
Respondent is James Hoecker, Unicorp Ltd, c/o Unigenlifesciences.com, Hong Kong, SAR of China; represented by James Hoecker.
2. The Domain Name and Registrar
The disputed domain names <unigenlifescience.com> and <unigenlifesciences.com> are registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 20, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On November 20, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. The Response was filed with the Center on December 15, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 3, 2008. 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.
Pursuant to the Rules, paragraph 12, the Panel on January 17, 2008 requested the parties to make the following submissions:
“1. In respect of the Respondent:
Respondent is to submit further evidence to show (a) proof of incorporation of Unicorp Ltd and Unigen Life Science Ltd, namely documents of incorporation such as memorandum and articles of association; (b) the registered offices of these two companies; (c) the ownership of and relationship between these two companies; and (d) the relationship of James Hoecker and these two companies.
Respondent is provided six days from the date of the notification of the present Procedural Order to provide the requested documentation. Submissions are thus due January 23, 2008.
2. In respect of Complainant:
Complainant shall have the opportunity – should he so wish – to make a submission limited on the initial submissions filed by Respondent within three days, i.e. by January 26, 2008.”
Respondent submitted a timely filing in response to the Panel’s Order. Complainant requested a two-day extension (as January 26, 2008 fell on a Saturday) to January 28, 2008 in order to submit its reply, which was subsequently granted by the Panel. Accordingly, the projected decision due date was postponed to February 1, 2008. The Panel is satisfied that the Complainant submitted a timely reply within the specified (extended) response period i.e. prior to midnight Geneva time, January 28, 2008.
On February 6, 2008, Respondent instructed Baker & McKenzie.Wong & Leow, Singapore to request for the right for Respondent to make further submissions in response to Complainant’s reply. The Panel Order did not make provision for additional filings by either party. In particular, it made no provision for the filing of a further reply by Respondent to Complainant’s submission. It is important to note that the Policy and Rules make no provision for additional filings, other than as may be requested at the discretion of the appointed Panel. In this regard, the Panel notes that the request for further submissions from Respondent was made on February 4 and February 6, 2008, long after the projected due date for the decision. The Panel is satisfied that it will be able to proceed to rendering a decision based on the filed submissions and is of the opinion that no further submissions are necessary from either party.
4. Factual Background
Complainant is a global biopharmaceutical company which develops, manufactures, and markets goods and services related to botanical compounds. Complainant’s goods sold under Complainant’s trademarks include chemical additives derived from botanical compounds, natural products for use in the manufacture of cosmetics, lotions, biological and chemical diagnostic reagents, nutritional drinks and dietary supplements. Services offered under Complainant’s marks include proprietary technology platforms including bioprospecting, bioinformatics, high throughput purification and structure dereplication processes.
Complainant began operating in the United States of America under the name Unigen Pharmaceuticals, Inc. by at least about February 15, 2002 and Complainant has an Internet presence at “www.unigenpharma.com” and “www.unigenusa.com”, representing itself as Unigen Pharmaceuticals, Inc. on these sites and markets various goods and services through various outlets including <unigenpharma.com> and <unigenusa.com>.
Complainant owns the following two United States Trademark Registrations:
1. UNIGEN (U.S. Reg. No. 2, 875,252) in International Class 5, for “gelatin capsules sold empty for pharmaceuticals; biological and chemical diagnostic reagents for clinical medical laboratory use; medical diagnostic reagents; food for medically restricted diets; nutritional drink mixes for use as a meal replacement; dietary supplements, namely, enzymes and ferments used to aid the body in the digestive process and in stabilizing and improving metabolic health; medicinal herb supplements; medicated dermal lotions; nutritional substances for pharmaceutical purposes, namely dietary supplements and vaccines for human and animal use”; and
2. UNIGEN (U.S. Reg. No. 3,210,083) in International Class 1, for “chemical additives, including botanical compounds, fractions or extracts, and natural products similarly processed, all for use in the manufacture of cosmetics, lotions, medications, pharmaceuticals and dietary supplements; chemicals for use in the manufacture and preparation of pharmaceutical, cosmetic and nutriceutical products”.
3. Complainant’s registrations are use-based and claim a first use date of at least March 1, 2002 and June 11, 2002 respectively.
Respondent’s domain names were registered on December 10, 2004.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Identical or Confusingly Similar
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant trademarks UNIGEN in which Complainant has rights. Complainant adduced evidence before the Panel to prove United States trademark registrations in the marks UNIGEN and Complainant asserts that it has both strong common law and statutory rights in the marks UNIGEN and UNIGEN PHARMACEUTICALS, INC. in connection with products, including pharmaceutical products and research services, all related to botanical compounds. Complainant asserts that its trademarks have a first use date of at least March 1, 2002 and June 11, 2002, respectively. In contrast, Respondent’s domain names were registered on December 10, 2004. Therefore, Complainant’s trademark rights precede Respondent’s registration of the disputed domain name.
Complainant submits that the disputed domain name and the Complainant’s marks are confusingly similar. The common element between the marks and the disputed domain names is UNIGEN, a fanciful term which is inherently distinctive. The disputed domain names <unigenlifesciences.com> and <unigenlifescience.com> and Complainant’s mark UNIGEN differ in that the disputed domain names add the descriptive element “lifesciences” or “lifescience”, and differs from Complainant’s mark UNIGEN PHARMACEUTICALS, INC. in that the descriptive element “pharmaceuticals” is replaced with the descriptive element “lifesciences”. Complainant asserts that previous panels have found that addition of generic and/or descriptive terms to an otherwise distinctive trademark name does not prevent a finding of confusing similarity to the registered trademark and Complainant cites Sanofi-Aventis and Aventis Pharma Deutschland GmbH v. Reardon Health Partners LLC, WIPO Case No. D2006-1264; Boehringer Ingelheim Pharma GmbH & Co. KG v. Philana Dhimkana, WIPO Case No. D2006-1594; Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-1086. Furthermore, the addition of “.com” as a top level domain to the domain names also does not distinguish Respondent’s domain names from Complainant’s trademarks as was decided by previous Panel decisions. Complainant cites Daddy’s Junky Music Stores Inc. v. Amjad Kausar, NAF No. FA140598.
Rights or Legitimate Interests
Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names for the following reasons:
- To Complainant’s knowledge, Respondent is not known by any variation or permutation of Complainant’s trademarks UNIGEN and UNIGEN PHARMACEUTICALS, INC. More specifically, Complainant notes that according to the WHOIS records listing the registrant of the disputed domain name <unigenlifesciences.com> was altered during the preparation of the present Complaint. Previously, as of May 1, 2007, the registrant was listed as Genesis James Hoecker. James Hoecker is also listed in the WHOIS listing for <unigenlifescience.com>. The newly named registrant for <unigenlifesciences.com> appears to be a privacy listing which is provided by the Registrar Dotster.com. Complainant asserts that, after conducting various investigations, the likely inference is that ownership remains with prior registrant, Genesis James Hoecker, who is now shielded from public view with a privacy listing. Complainant feels that its conclusion and inference is considerably strengthened by the recitation of “Genesis, a pharmaceutical company” on the current Respondent’s website at <unigenlifesciences.com>. Complainant has reasons to believe that the same entity (“Genesis” or “Genesis Rejuvenation Products”) has registered both <genesisrx.com> and the disputed domain names <unigenlifescience.com> and <unigenlifesciences.com> and that the respective web pages of these websites are very similar featuring a distinctive design which is identical for all web pages except for the substitution of UNIGEN in place of GENESIS at <unigenlifesciences.com>. Complainant submits and concludes that the entity known as “Genesis” or “Genesis Rejuvenation Products” currently controls the instant domain names and that neither entity “Genesis” or “Genesis Rejuvenation Products”, Unicorp, Ltd or “c/o UNIGENLIFESCIENCES.COM” which to all appearance is a privacy listing, has any apparent rights or legitimate interest in the domain name <unigenlifesciences.com>. Whether actual control and/or ownership rests in the entity known as “Genesis” or “Genesis Rejuvenation Products”, Unicorp, Ltd or “c/o UNIGENLIFESCIENCES.COM” is not critical to this analysis.
- Respondent is not an entity related to Complainant, is not a licensee of Complainant’s and has no permission from Complainant to use UNIGEN, UNIGEN PHARMACEUTICALS, INC. or any version thereof.
- The mere registration of the domain is not sufficient to establish rights or legitimate interests in the domain name and Complainant cites Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244.
Registered and Used in Bad Faith
Complainant submits that Respondent has registered and used the disputed domain names in bad faith for the following reasons:
- The disputed domain names were registered primarily for the purpose of disrupting the business of a competitor.
- Complainant argues that it has demonstrated that the current registrant for <unigenlifesciences.com> appears to be holding the domain name as a privacy listing and the current registrant for <unigenlifescience.com> appears to have a nexus to Genesis via common naming of James Hoecker. Complainant contends that its products featured on Complainant’s website are medications to enhance an individual’s health, wellness and energy. Complainant asserts that Respondent is in direct competition with Complainant because the products featured on Respondent’s websites are also medications to enhance and individual’s health, wellness and energy. Respondent’s web pages at the dispute domain names offer oral, injectable and dermal formulations of medications such as growth hormone, testosterone, anabolics, and other products. As a competitor, Respondent was surely aware of Complainant’s mark at the time Respondent registered the disputed domain names. Complainant submits that Respondent must have chosen the confusingly similar domain names with the intent of trading on it and attracting Internet users. These Internet users would otherwise have been potential customers of Complainant’s and to divert them in this way and to direct potential customers away from Complainant and towards rivals can only be described as disrupting the business of Complainant as a competitor. Complainant cites Sanofi-Aventis v. Antoine Tardiff / Cybernet Marketing, WIPO Case No. D2006-0879; Immunex Corporation and Amgen Inc. v. Harold Adkins and Infotek, Inc., WIPO Case No. D2005-0033.
- By using the domain name which is identical or confusingly similar, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Complainant contends that since the content of Respondent’s sites are similar to or identical to the content users would expect from a legitimate site of Complainant’s, users are likely to believe that the sites are sponsored by or affiliated with Complainant. As a result of the confusing similarity between the disputed domain names and Complainant’s marks, Complainant asserts that it is unlikely that an Internet user will ever realize that Respondent’s websites are not affiliated with Complainant. Complainant submits that such uses are an intentional are an intentional act to divert customers and potential customers and creates a likelihood of confusion as to the relationship of Complainant to Respondent’s websites. Creation of such likelihood of confusion as to affiliation of Respondent’s websites with Complainant is evidence of bad faith and Complainant cites TM Acquisition Corp. v. Huelsenbeck, NAF Case No. FA419106.
Respondent asserts that the respondent in the present administrative proceeding is Unigen Life Science’s Ltd, a Hong Kong company with a principal place of business at 13/F Silver Fortune Plaza, 1 Willington Street, Central, Hong Kong. Respondent further asserts that the disputed domain names are registered to Unicorp Ltd who operates the current website in conjunction with its operating company Unigen Life Sciences Ltd of Hong Kong. Unigen Life Sciences Ltd does not transact business, market, or sell their products in, within, or to/from the United States.
Respondent’s response to Complainant’s contentions may be summarized as follows:
Identical or Confusingly Similar
Respondent argues that Complainant’s trademark registration US 2,875,252 for UNIGEN is registered for goods and services unrelated to Respondent’s business as Complainant’s registrations were in the field of health supplements and the only reference to “pharmaceutical” in that class is “nutritional substances for pharmaceutical purposes” which does not constitute pharmaceuticals – Respondent’s business. Respondent asserts that its use of UNIGEN was prior to the registration date of Complainant’s trademark.
Respondent asserts that with regard to Complainant’s second trademark registration US 3,210,083, was only registered on February 20, 2007 and argues that Complainant ignored trademark filings; six suspension notifications/writings; and an Abandonment notice. Respondent argues that the trademark was granted registration after Unigen Life Sciences Ltd had been operating a website for its pharmaceutical products within the domain names here contested.
Respondent argues that Complainant is in the business of health supplements and nutritional products whilst Respondent is in the pharmaceutical business. Therefore, they are not in competition and there can be no confusion on the part of the consumer.
Respondent also asserts that Complainant in selecting the name of their company UNIGEN PHARMACEUTICALS INC., copied a pre-existing pharmaceutical manufacturer being the name “Unigen Pharmaceuticals” incorporated in 1995, located in Westminster, Maryland, USA. Respondent contends that the name “UNIGEN” is not inherently distinctive as Complainant has claimed in its Complaint and it is not created by Complainant. Respondent further points out Complainant was not able to register <unigen.com> as it was registered and owned by Unigen Corporation (USA) four years ago. Consequently, Complainant settled for a registration of <unigen.net>. Respondent argues that since Complainant has registered <unigenpharma.com> and <unigenusa.com>, Complainant must know that <unigen.com> is not available for registration and consequently, Complainant must know that the name UNIGEN is not distinctive.
Respondent explained that it has created the name “Unigen” as a combination of one of its companies Unicorp Ltd and the brand name of its pharmaceutical product line “Genesis”. “Uni” is taken from Unicorp and “Gen” for “Genesis”.
Respondent argues that when Complainant contends that the disputed domain names are confusingly similar to Complainant’s marks by comparing UNIGEN to UNIGEN LIFE SCIENCES while using UNIGEN PHARMACEUTICALS indicates that Complainant are either infringing on the rights of Unigen.com (Unigen Corporation) and Unigen Pharmaceuticals Inc. of Maryland.
Therefore, Respondent contends that (a) Complainant has failed to establish that it has rights in the mark UNIGEN as the categorization of the mark does not include pharmaceutical manufacturing; (b) Complainant has failed to provide that the trademarks and domain names are confusingly similar as Complainant’s marks are not distinctive and Respondent has used such marks prior to Complainant’s trademarks; and (c) Complainant has failed to establish that the addition of “life sciences” in the domain name is material in so far as the Respondent company is Unigen Life Sciences Ltd which is identical to the disputed domain names except for the word “Ltd”.
Rights or Legitimate Interests
Respondent contends that it has rights or legitimate interests in the disputed domain names for the following reasons:
- The domain names in question are <unigenlifesciences.com> and <unigenlifescience.com> and they are owned by Unicorp Ltd and its operating company Unigen Life Sciences Ltd (Hong Kong). Respondent contends that after removing the corporate identifier and the spaces between the words and adding “.com”, the domain names in question are virtually identical to the name of the registered operating company, Unigen Life Sciences Ltd.
- Respondent refuted Complainant’s argument that the entity known as “Genesis” or “Genesis Rejuvenation Products” currently controls the instant domain names.
- Respondent contends that it does not require licensing from the Complainant to operate its business under its registered name.
- Respondent submits that its products are recognized pharmaceuticals and Complainant’s products are not. Therefore, Respondent argues that the pharmaceuticals it manufactures receive far greater Internet user interest and as such, Complainant can only receive economic benefit by virtue of Respondent’s domain name containing the name UNIGEN.
Registered and Used in Bad Faith
Respondent contends the disputed domain names were not registered and are not being used in bad faith by Respondent for the following reasons:
- The disputed domain names were registered for the purpose of direct commerce and marketing of the pharmaceutical products manufactured by the registrant. They were not registered for “selling, renting, or transferring the domain”.
- The disputed domain names were registered for the purpose of direct commerce and marketing of the pharmaceutical products manufactured by the registrant. They were not registered to “prevent the owner of the trademark or service mark from reflecting it in a domain name”. Respondent contends that Complainant is able to demonstrate its trademark via <unigen.net>; <unigenpharma.com> and <unigenusa.com>. Respondent has no history of domain name complaints or trademark complaints.
- Respondent contends that it is not in competition with Complainant as Respondent is in the pharmaceutical business whereas Complainant is in the health supplement and nutritional products. Furthermore, Respondent contends that the name UNIGEN is not distinctive or fanciful. Thus, Complainant cannot claim exclusive rights over this name. Therefore, Complainant’s argument that Respondent secured the domain names that bear the same name as Respondent’s registered company name, not for marketing but to disrupt Complainant’s business is unfounded.
- Respondent contends that it has not registered and used the disputed domain names to “intentionally attempt to attract, for commercial gain, Internet users” by “creating a likelihood of confusion with Complainant’s mark” because (a) there is nothing similar between the parties’ products, no competitive nature between the two companies exists, and in fact, if there is any confusion it would likely yield an economic loss and not gain to Respondent; (b) Respondent’s use of the name predates the intellectual property of the Complainant; (c) Respondent utilizes domain names which reflect the name of its own registered company.
Reverse Domain Name Hijacking
Respondent contends that a reverse domain name hijacking was made by Complainant for the following reasons:
- The vast majority of the case references made by Complainant have no relevance to the arguments of this case. Respondent submits that Complainant did so for intimidation purposes and to increase the necessary time required by Respondent in repudiating their claims, thereby increasing their chances of a default of a non-commensurate response.
- Respondent contends that Complainant did not engage in traditional or any degree of reasonable common sense research efforts and Respondent notes that no attempts have been made by Complainant to communicate with Respondent on this matter.
- Respondent contends that Complainant’s complete lack of effort to communicate with Respondent prior to this Complaint and Complainant’s hasty conclusion that a pharmaceutical company must have no legitimate interests or rights to its own website domain names constitutes a gross misuse of this administrative process.
- Respondent submits that whether the name is registered to Unicorp or Unigen Life Sciences was immaterial as it was obvious that the site was being used to market its own unique products.
- Respondent contends that Complainant is fully aware that Respondent has not acted in bad faith but chose to willfully ignore the obvious facts which would indicate to a person of sound mind that a company did exist and was marketing pharmaceutical products using the domain names.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain names; and
3. the domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trademark rights in UNIGEN, common law rights in UNIGEN PHARMACEUTICAL INC. and continues to have such rights in the marks based on first use from at least 2002 in respect of UNIGEN (U.S. Reg. No. 2, 875,252) in international class 005. With regard to UNIGEN (U.S. Reg. No. 3,210,083), it is important to note that Complainant has obtained registration of the second UNIGEN mark in 2007 after overcoming opposition proceedings of the application for registration. Prior to 2007, Complainant continues to have common law rights in the marks based on use. The Panel rules that Complainant has rights and continues to have such rights in the relevant UNIGEN marks. The issue of whether Complainant’s marks infringe some other third party’s trademark rights in the United States of America is not an issue before this Panel. It is for the party alleging infringement to bring its actions before a competent court of law in the United States of America.
The disputed domain names <unigenlifesciences.com> and <unigenlifescience.com> consist of Complainant’s UNIGEN marks in its entirety, the English words “lifesciences” and “lifescience” attached to them respectively at the back and the suffix “.com”. In assessing the degree of similarity between Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s UNIGEN marks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant’s products and services.
The Panel finds the “unigen” portion to be the most prominent part of the disputed domain names which will attract consumers’ attention. The Panel accepts Complainant’s contention that the English words “lifescience” and “lifesciences” are descriptive and the addition of these English words to the word “unigen” does not provide additional specification or sufficient distinction from Complainant or its UNIGEN marks. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks in which Complainant has rights.
The Panel rules in favour of Complainant in the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain names and therefore the burden shifts to Respondent to rebut Complainant’s contentions. Upon reviewing the arguments of the parties and the evidence adduced before the Panel, the Panel concludes that Respondent has not discharged its burden of proving that it has rights and legitimate interests in the disputed domain names.
The principal contention in Respondent’s response to Complainant’s prima facie case that Respondent does not have any rights or legitimate interests is the fact that Respondent is a legitimate active company incorporated in Hong Kong conducting its pharmaceutical business online with the use of the disputed domain names. Respondent in its Response has submitted that the respondent of this proceeding is a company called Unigen Life Sciences Ltd incorporated in Hong Kong with a principal place of business at 13/F Silver Fortune Plaza, 1 Willington Street, Central, Hong Kong. Respondent further asserts that the disputed domain names are registered to Unicorp Ltd who operates the current website in conjunction with its operating company Unigen Life Sciences Ltd of Hong Kong. Unigen Life Sciences Ltd does not transact business, market, or sell their products in, within, or to/from the United States. In support of its contentions, Respondent has submitted search reports generated in the Internet under a general search portal to show that Unicorp Holdings Limited and Unigen Life Sciences Limited actually exist. The search reports do not contain very much information except for company name; company type; date of incorporation; company status; active status; and name history. There is no information on the directors of the company and other important information such as authorized or paid up capital etc. Such general search reports only establish the fact that these two companies exist but they do not prove that Respondent owns or controls these two companies. To ascertain the authenticity of Respondent’s claims, the Panel issued an order on January 17, 2008 requesting further evidence in the following to be submitted by the parties to the Center – to show (a) proof of incorporation of Unicorp Ltd and Unigen Life Science Ltd, namely documents of incorporation such as memorandum and articles of association; (b) the registered offices of these two companies; (c) the ownership of and relationship between these two companies; and (d) the relationship of James Hoecker and these two companies.
However, Respondent failed to provide any of the requested documents and questioned the relevance of (c). The proof of ownership and relationship between Unicorp Ltd and Unigen Life Sciences Ltd is central to Respondent’s claims that it has rights and legitimate interests in the disputed domain names. While the Panel does not exclude the possibility of such relationship, it is incumbent on Respondent to present evidence establishing its claim.
Respondent has alleged that since its company name is Unigen Life Sciences Ltd, the disputed domain names reflect almost completely Respondent’s corporate identity. Given the fact that the disputed domain names are registered by Unicorp Ltd, the relationship and ownership of these two companies are therefore crucial to Respondent’s claims. Instead of providing the relevant documents of incorporation, Respondent adduced once again the search reports and provided a document of apparently limited relevance here – a change of name document in Hong Kong under the Companies Ordinance Chapter 32 showing a change of name from Unigen Limited to Unigen Life Sciences Limited and a change of name from North Point Holdings Limited to Unigen Limited. These documents do not substantiate Respondent’s claims in relation to Unicorp Ltd. There is another point which the Panel wishes to highlight and that is the Response from Respondent has been prepared by one James Hoecker who the registrar has confirmed (along with Unicorp Ltd) as the registrant of the disputed domain names. Since Mr. James Hoecker has provided substantial information about the holding and ownership of the domain names by the companies, Unicorp Limited and Unigen Life Sciences Limited, it is pertinent for Respondent to explain the relationship between James Hoecker, the companies and the disputed domain names and to substantiate this explanation with supporting documents. However, Respondent merely stated that Mr. James Hoecker is a consultant to these companies without any supporting documents.
The fact that Respondent has been less than forthcoming in the submission of the relevant documents to the Panel leads the Panel to conclude that Respondent does not have rights or legitimate interests in the disputed domain names.
The Panel rules in favour of Complainant for the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trademark. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. This observation coupled with the fact that Complainant and Respondent are operating in similar if not identical fields of business, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain names.
With regard to Respondent’s assertion that Respondent and Complainant are not in competition, the Panel is persuaded that there may be a perception of considerable overlap between pharmaceuticals and health supplements from the ordinary Internet consumers’ point of view (although perhaps this is not necessarily the case from the industry experts’ perspectives). Consequently, given the fact that (a) Respondent most likely had knowledge of Complainant and its trademarks at the time of registration; (b) the disputed domain names are confusingly similar to Complainant’s trademarks; and (c) Complainant and Respondent are in a similar field of business, it is imperative that Respondent explains satisfactorily with supporting documents that the disputed domain names were registered and are being used for bona fide offerings of goods and services. This issue is intricately connected to Respondent’s claims that it has rights and legitimate interests in the disputed domain names and that it is a legitimate active incorporated company operating in Hong Kong in the pharmaceutical business. However, and while the Panel does not entirely discount the possibility of the latter claim, on the present record Respondent is unable to discharge its burden on the second part of the test. Consequently, it is difficult for the Panel to arrive at any other conclusion except one which suggests bad faith registration and use of the domain names on the part of Respondent.
The Panel finds for Complainant on the third part of the test.
Reverse Hijacking of Domain Name
Based on the submissions and the evidence adduced by the parties, the Panel did not find bad faith or an abuse of process on the part of the Complainant. In this regard, the Panel wishes to state that although it is good practice to make contact with Respondent with a view to possible settlement, the omission of such communications by Complainant to Respondent does not necessarily alter the rights and liabilities of the parties involved. See e.g. Laerdal Medical Corporation v. V. Lee, WIPO Case No. D2007-1672.
In the present proceeding, without necessarily endorsing Complainant’s apparent omission to explore settlement options, and noting also the Panel’s above discussion of the substantive merits of the case, the Panel declines to make a finding that Complainant has engaged in reverse hijacking of the disputed domain names.
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, <unigenlifesciences.com> and <unigenlifescience.com> be transferred to the Complainant.
Susanna H.S. Leong
Dated: February 12, 2008