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 Respondentís 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 arbitratorís decision, made on August 5, 2003, on the Respondentís 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 Respondentís 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 ICANNís 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 Respondentís 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:
ĎIn 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.í
"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 Ė 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; Haíaretz Daily Newspaper Ltd. v. United Websites, Ltd., WIPO Case No. D2002-0272 and W. & G. Foyle Limited v. Foyleís 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 Panelís 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 Complainantís 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. Partiesí Contentions
Identity/ confusing similarity
The disputed domain names are identical to the Complainantís trademarks, except for the gTLD ".com."
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 Complainantís 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 Complainantís 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 Complainantís 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 Complainantís 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 Complainantís 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 Complainantís 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 Respondentís own website, where competing goods are sold, by misleadingly creating a likelihood of confusion with the Complainantís marks.
The Respondent also failed to respond to two "cease and desist" letters from the Complainant.
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 Complainantís statements concerning the parties "prior" relationship.
The Respondent denies bad faith registration and use. The Respondent did reply to the Complainantís "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.
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 Respondentís rights to register and use the domain names. On August 19, 2003, the ICDR arbitrator dismissed the Complainantís 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, IcelandÖ. 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. Johnssonís 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. Complainantís Reply
The Complainant is entitled to rely on its rights even after assignment, until the assignment is recorded. The Complainantís claim of better right to the disputed domain names vis à vis the Respondent should be tried on grounds of the Complainantís 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 Complainantís 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 Respondentís replies to the Complainantís "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 Respondentís objection to the Panelís 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 Complainantís 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 Complainantís trademark ARCTIC ROOT, registered in Germany;
· the domain name <chisandra.com> is identical to the Complainantís trademark CHISANDRA, registered in Germany; and
· the domain name <kanjang.com> is identical to the Complainantís 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 Complainantís 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 trademarksÖ. to the [Respondent], except as granted in Article XIX. Furthermore the [Respondent] is not allowed to register any trademarkÖin 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 trademarksÖof the Products." The Complainant has asserted that the partiesí 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 Respondentís 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 Complainantís trademarks in its own name nor to register the disputed domain names and that the Respondent was aware of the Complainantís 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 Panelís dismissal of the Respondentís motion to terminate and/or stay the proceeding.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís 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 Complainantís 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 Complainantís products and products made from the Complainantís raw materials, the Panel finds that the Respondentís 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 Respondentís own name of the Complainantís 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 Complainantís 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 Complainantís 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.
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.
Dated: August 31, 2003