WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lenz & Staehelin Ltd v. Christopher Mikkelsen

Case No. D2012-1922

1. The Parties

The Complainant is Lenz & Staehelin Ltd of Zurich, Switzerland, represented by Lenz & Staehelin, Switzerland.

The Respondent is Christopher Mikkelsen of Copenhagen, Denmark, represented by Cabinet Shefet, France.

2. The Domain Names and Registrar

The disputed domain names <unitaid.biz>, <unitaid.com>, <unitaid.info>, <unitaid.net> and <unitaid.org> are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2012. On September 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 28, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 8, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceedings commenced on October 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2012. The Response was filed with the Center on October 30, 2012.

The Annexes to the Response were filed with the Center on November 8, 2012. On November 9, 2012, the Complainant submitted a Supplemental Filing objecting to the late submission of the Annexes to the Response.

The Center appointed Luca Barbero as the sole panelist in this matter on November 23, 2012. 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.

After reviewing the Case File, the Panel noted the following:

1. The Complaint concerning the disputed domain names was filed with the Center on September 27, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 8, 2012.

2. The Response for its part was filed with the Center on October 30, 2012. The Annexes to the Response were filed with the Center on November 8, 2012.

3. On November 9, 2012, the Complainant submitted a Supplemental Filing objecting to the late submission of the Annexes to the Response.

4. According to the Complainant, “representatives of 44 countries agreed in 2004 that new, more stable resources were needed to finance health development, and committed themselves to developing innovative financial mechanisms”. An international drug purchase facility named Unitaid was therefore created and officially launched on September 19, 2006 in New York at the opening session of the United Nations General Assembly.

5. The disputed domain names <unitaid.com>, <unitaid.net> and <unitaid.org> were registered on September 4, 2005 by the Respondent.

6. The Complainant alleges that the Respondent offered to transfer the disputed domain names <unitaid.com>, <unitaid.net> and <unitaid.org> at a meeting which took place in 2007, in consideration “for a down payment amounting to EUR 500,000 and a second part consisting in a yearly payment of a contribution of a size and duration to be negotiated at a later stage”.

7. The disputed domain names <unitaid.biz> and <unitaid.info> were registered on September 4, 2011 by the Respondent.

8. According to the Complainant, “the disputed domain names [<unitaid.com>, <unitaid.net> and <unitaid.org>] were obtained shortly before the name Unitaid has been disclosed to the public. At this moment, the name Unitaid was already under discussion within WHO/Unitaid so that it appears very likely that the Respondent has been informed thereof and registered the disputed domain names in bad faith. This seems even more likely as “unitaid” is a very imaginative creation and it is unlikely that two persons had the same idea at the same time so that they created the same word”.

9. In its Response, the Respondent states that “registered the Trademarks UNITAID only after the Respondent registered the abovementioned domain names, and with full awareness of the fact that the Respondent already registered them. Indeed, the Respondent obtained the domain names ending in “.org”, “.com” and “net” long before the name Unitaid was disclosed to the public and long before the Trademarks have been registered”. However, the Respondent has not expressly denied knowledge of an international drug purchase facility to be named “Unitaid” at the time Respondent registered the <unitaid.com>, <unitaid.net> and <unitaid.org> domain names.

10. The Respondent also states that before it “received any notice of the dispute, there is evidence of the Respondent's demonstrable preparations to use the domain names in connection with a bona fide offering of services”. However, the Respondent has provided no evidence of demonstrable preparations to use the disputed domain names in connection with any Unitaid-related services ostensibly related to the name “Unitaid”.

To facilitate the rendering of a balanced decision based on the most complete available record, the Panel decided to take into account the Annexes to the Response and invited the parties to file submissions addressing specific matters enumerated under the Panel’s recitals.

In light of the foregoing, the Panel issued a Panel Order on November 29, 2012, ordering:

1. the Complainant to provide any further material information and/or supporting evidence it wished to submit in relation to the Respondent’s alleged knowledge of the rights claimed by the Complainant in UNITAID at or prior to the Respondent’s registration of the <unitaid.com>, <unitaid.net> and <unitaid.org> domain names;

2. the Respondent to provide any further material information and/or supporting evidence it wished to submit to demonstrate preparation it may have undertaken to use the disputed domain names in specific connection with any “Unitaid described or branded service”.

In response to this Order, the Complainant stated that the name “Unitaid” was already in discussion within WHO/Unitaid in the months preceding the official launch of Unitaid and it is thus possible that the Respondent has been informed thereof. The Complainant again emphasized the created nature of the name and the unlikelihood that two persons would had the same idea at the same time, without relevant knowledge. The Complainant pointed in that respect to the decision in MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 and the findings made by the panel in that case on the issue of bad faith.

In its response to this Order, the Respondent provided a brief statement in effect denying knowledge of the Complainant’s intended use of the “Unitaid” name. The Respondent also provided some undated pages in which the word “Unitaid” appears on blank stationary, along with what appears to be some mock-ups of a webpage and a t-shirt design wearing the name “Unitaid”.

4. Factual Background

In 2006, Brazil, Chile, France, Norway and the United Kingdom decided to create an international drug purchase facility aimed at improving access to medicines for the world’s poorest people as part of the global fight against the three major pandemic diseases, HIV, malaria and tubercolosis. Said initiative, which is financed through a tax on airline tickets, was given the name “Unitaid”.

Unitaid was officially launched on September 19, 2006 in New York at the opening session of the United Nations General Assembly.

Unitaid is not a separate legal entity as the World Health Organisation serves as the host organization, providing its Secretariat, Trust Fund, administrative and fiduciary support. Today, Unitaid is supported by 29 countries and by the Bill & Melinda Gates Foundation.

In 2007, the French Minister for Foreign Affairs created a website for the benefit of Unitaid, “www.unitaid.eu”.

In 2009, a Fiduciary Agreement was made between the World Health Organization/Unitaid and the Complainant to file and hold in its own name, for the benefit of Unitaid, the necessary applications for the protection of the “Unitaid” name, according to the instructions and under the control of World Health Organization/Unitaid.

In 2009, the Complainant thus registered, in its own name but for the benefit of World Health Organization/Unitaid, UNITAID as a trademark in numerous jurisdictions.

The Complainant is the owner, amongst others, of the International Registration No. 1030477, designating also the European Community, for

, registered on November 24, 2009, in classes 5, 9, 30, 35, 36, 39, 41 and 44. The disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> were registered by the Respondent on September 4, 2005. On September 4, 2011, the Respondent registered the disputed domain names <unitaid.info> and <unitaid.biz>.

The disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> redirect users to the web site “www.refunite.org” of the Respondent, while the disputed domain names <unitaid.info> and <unitaid.biz> are not pointed to any active web site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical to the trademark UNITAID of the Complainant as they contain the same word “unitaid”.

With reference to rights to or legitimate interest in the disputed domain names the Complainant states that, before any notice to the Respondent of the dispute: i) there was no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain names or a name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services, as the disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> merely redirect to the web site “www.refunite.org” of the Respondent, while the disputed domain names <unitaid.info> and <unitaid.biz> are not pointed to any active web site; ii) the Respondent and its organization named “Refugees United” have not been commonly known by the disputed domain names and the home page of the Respondent’s web site “www.refunite.org” does not even contain the word “unitaid”; and iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

The Complainant contends that the disputed domain names have been registered and used in bad faith by the Respondent and that they were acquired primarily for the purpose of selling, renting or otherwise transferring them to the World Health Organization/Unitaid or to a competitor of the Complainant for a valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain names. The Complainant informs the Panel that, in 2007, representatives of the French Ministry of Foreign Affairs met the Respondent to negotiate an amicable settlement with the Respondent and the Respondent required EUR 500,000 and an yearly payment of a contribution of a size and duration to be negotiated at a later stage. Such request was justified by the Respondent in: i) covering the costs of creating the web addresses and setting them up; ii) beginning a new refugee project under the name of “Unitaid”, which was planned to be launched when a new world catastrophe would occur; and iii) launching of the project under another name than “Unitaid”. The Complainant emphasizes that the Respondent’s alleged costs are excessive and aimed at obtaining a significant and unjustified gain to detriment of the World Health Organization/Unitaid.

The Complainant acknowledges that the Respondent registered the disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> (in 2005) before the name of Unitaid was officially revealed to the public (in 2006) and before the trademark UNITAID was registered (in 2009). However, the Complainant highlights that the disputed domain names were registered shortly before the name “Unitaid” was disclosed to the public and, at that time, this name was already under discussion within the World Health Organization/Unitaid. It therefore appears very likely that the Respondent had been informed thereof and registered the disputed domain names in bad faith. The Complainant underlines that the name “Unitaid” is a very imaginative creation and it is unlikely that two persons had the same idea at the same time so that they created the same word.

In addition, the Complainant states that the more recent registrations, dated September 4, 2011, of the disputed domain names <unitaid.info> and <unitaid.biz>, which have never been actively used, support the suspicion that the Respondent has been acting in bad faith as the Respondent likely registered the disputed domain names <unitaid.info> and <unitaid.biz> in order to require a very substantial compensation for their transfer to the Complainant.

B. Respondent

The Respondent contends that the UNITAID trademarks were registered only after its registration of the disputed domain names and with full awareness of the fact that the Respondent had already registered them. The Respondent states that the disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> were registered long before the name “Unitaid” was disclosed to the public and long before the trademarks have been registered.

With reference to the meeting that took place between the representatives of the World Health Organization/Unitaid and the Respondent’s organization, the Respondent says that it was held before the launching of the Unitaid organization and that, in that venue, the representative of Unitaid recognized that they had opted for the name “Unitaid” with full awareness of the fact that the Respondent had already registered the disputed domain names, but indicated they were given an opportunity by FIFA to have their message sponsored during the 2006 World Cup and chose this name accepting to deal with the consequences at a later stage. The Respondent therefore contends that the Complainant’s trademarks were registered in circumstances characterized by negligence and bad faith, possibly to prevent the Respondent from registering its original idea as a trademark.

The Respondent states that it has fully rights and legitimate interest in respect of the disputed domain names since: i) there is evidence of the Respondent’s demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services; and ii) the Respondent is making a legitimate noncommercial and fair use of the disputed domain names, without intent to misleadingly divert consumers for commercial gain or to tarnish the trademarks or service marks at issue.

The Respondent claims that, before any notice of the dispute, the Respondent had already launched its humanitarian association Refunite and had planned to launch a new project when the next world disaster would occur. The Respondent contends that the redirection of the disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com> to the website of Refunite while waiting for a new project with the same humanitarian purpose proves the Respondent’s demonstrable preparation to use the disputed domain names in connection with a bone fide offering of services.

The Respondent says that its project under the name “Unitaid” was planned to be similar to the goal of Refunite, which is a non-governmental and non-profit organization based in Denmark, New York and Sao Paolo with the objective of helping refugees re-find missing family through a unique search engine.

The Respondent contends that the main reason why it is not commonly known by the disputed domain names is that the name “Unitaid” has been chosen by the association known as Unitaid despite their awareness that said name had already been registered as domain names. It also states that it avoided to use the disputed domain names because of the negotiations of a possible transfer of those domain names to the Complainant.

The Respondent disputes the Complainant’s contentions that the disputed domain names were registered in bad faith, stating that they were registered for the unique purpose of launching a new humanitarian project when a new world catastrophe would occur and the name “Unitaid” was created by the Respondent as it would result from a merger between “united” and “aid”, referring to the humanitarian purpose of helping refugees to be reunited.

The Respondent contends that the purpose of its registrations was to help the union of, for example, family members, and not to sell the disputed domain names to the World Health Organization/Unitaid. The Respondent asserts that a price was discussed only after the receipt of the request for transfer of the disputed domain names from Unitaid and underlines that the amount was determined taking into account

i) the costs of creating the Internet addresses and setting them up; ii) the costs related to launching the new refugee project under the name “Unitaid”; and iii) the costs related to launching the new refugee project under another name. The Respondent states that the prices offered to the World Health Organization/Unitaid for the disputed domain names are justified as “Unitaid” is the perfect name for its project that aids refugees to be reunited and indicates that the consideration obtained for the transfer of the disputed domain names would be paid to a charitable foundation.

As to the disputed domain names <unitaid.info> and <unitaid.biz>, the Respondent contends that they were registered in good faith in order to launch its new project in the case where it would have reached no agreement with the World Health Organization/Unitaid as to the transfer of the disputed domain names <unitaid.org>, <unitaid.net> and <unitaid.com>.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the owner of trademark rights for UNITAID. This conclusion is supported by:

i) the Complainant’s trademark registrations constituted by UNITAID with the addition of design elements, where the core of the trademarks is constituted by the word “unitaid”. See, among others, Ternana Calcio S.p.A. v. Domain Reseller Consulting Inc., WIPO Case No. D2003-0137 (<ternana.com>), stating that the complainant had established rights in a device mark where the word “Ternana” was found to be the most prominent and substantial component, since the device elements were found not sufficiently distinctive to prevent consumer confusion arising from the identity of the two words;

ii) the substantial and widespread use of the sign UNITAID since more than five years to identify the international facility for the purchase of drugs against HIV/AIDS, Malaria and Tuberculosis hosted and administered by the World Health Organization.

The Panel is satisfied that the disputed domain names are, for the purposes of the Policy, functionally identical to the word element of the Complainant’s UNITAID trademark, and are in any event confusingly similar to that mark.

In light of the above, the Panel finds that the Complainant has proven the condition under paragraph 4(a)(i) of the Policy, requiring that the disputed domain names registered by the Respondent be identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

As mentioned above, after having reviewed the Case File, the Panel deemed appropriate to issue a Panel Order requesting:

“i) the Complainant to provide any further material information and/or supporting evidence it wished to submit in relation to the Respondent’s alleged knowledge of the rights claimed by the Complainant in UNITAID at or prior to the Respondent’s registration of the <unitaid.com>, <unitaid.net> and <unitaid.org> domain names;

ii) the Respondent to provide any further material information and/or supporting evidence it wished to submit to demonstrate preparation it may have undertaken to use the disputed domain names in specific connection with any “Unitaid described or branded service”.

In response to this Order, the Complainant indicated that the name “Unitaid” was already in discussion when the disputed domain names <unitaid.com>, <unitaid.net> and <unitaid.org> were registered and highlighted the created nature of the name and the unlikelihood that two persons would have had the same idea at the same time, without relevant knowledge. The Complainant relied, in that respect, on the decision rendered in MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 and the findings made by the panel in that case on the issue of bad faith. While the latter case is somewhat helpful in terms of that earlier panel’s approach to balance of probabilities assessment, on the other hand, the Complainant in this case did not provide affirmative proof as such of the Respondent’s knowledge of the Complainant and its plans concerning the “Unitaid” name at the time the Respondent registered the disputed domain names.

The Respondent provided in answer to the Panel Order a brief statement in which it denied knowledge of the Complainant’s intended use of the “Unitaid” name. As mentioned above, the Respondent also provided some undated pages in which the word “Unitaid” appears on blank stationary, along with what appears to be some mock-ups of a webpage and a t-shirt design wearing the name “Unitaid”. The Panel finds that the Respondent’s statements in this respect are somewhat self-serving in the circumstances and this impression is re-enforced by the unpersuasive and rather cobbled-together impression created by the accompanying pages. On the whole, the Panel does not find that either response to its Order does a great deal to supplement the available record, leaving the Panel to an assessment as to merits and probability on the relatively limited record before it.

Though the Panel is to a degree uncomfortable to have to rule on a dispute between two parties apparently engaged in the provision of humanitarian services, the Panel can only render its decision under the Policy based on an on-balance assessment of pleadings and provided evidence before it, along with any inferences and conclusions which can logically be drawn from the overall circumstances.

Based on the evidence on record, the Panel finds that the Complainant has made a prima facie case against the Respondent under the second element of the Policy, and that the Respondent has failed on the provided materials to adequately rebut this or demonstrate that it has rights or legitimate interests in the disputed domain names.

The Panel firstly observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant, that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names or by the name “Unitaid”.

Moreover, the Panel finds that, on the basis of the documents and statements submitted by the Respondent, it has not provided convincing evidence showing that, before any notice of the dispute, it had made preparation to use the disputed domain names in connection with any “Unitaid described or branded service”. The mere redirection of three of the disputed domain names to the Respondent’s website, where the name “Unitaid” does not even appear, and the submission of undated pages showing the word “Unitaid” on blank stationary, of a t-shirt design wearing and of a mock-ups of a webpage are not sufficient to demonstrate that the Respondent, which registered the first three disputed domain names in 2005, took concrete steps aimed at realizing its project under the name “Unitaid”.

In light of the above and of the below findings as to bad faith registration and use, the Panel also finds that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names.

In assessing the Respondent’s bad faith at the time of the registration, the Panel considers that the Respondent, like the Complainant, appears to be engaged in the provision of certain humanitarian services, even though it has provided no convincing evidence of its claimed future plans to use the various disputed domain names.

The Panel wonders how credible it would really be for the Respondent to claim that it would not have been aware in some way of the Complainant’s plans to set up an apparently very well-funded and extensively prepared United Nations fund for humanitarian (medical) purposes under the name “Unitaid”, when the Respondent registered the disputed domain names, corresponding exactly to the name which the Complainant then obtained trademark registrations for, which domain names it subsequently offered to the Complainant for half a million Euros.

This Panel does feel compelled to find that the Respondent’s registration of the disputed domain names, in the particular circumstances of this case, and especially when combined with the offer to sell to the Complainant in particular for what must be regarded as a very significant amount the foundation of which furthermore remains unexplained, is not a mere coincidence. Furthermore, as an additional element evidencing the bad faith, the Panel notes that the Respondent registered two additional domain names <unitaid.biz> and <unitaid.info> in 2011, having actual knowledge of the Complainant’s identical trademark. The Panel feels it must, on balance on the present record, find the disputed domain names to have been registered and used in bad faith for purposes of the Policy.¹

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <unitaid.biz>, <unitaid.com>, <unitaid.info>, <unitaid.net> and <unitaid.org> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: January 8, 2013

¹ The Panel does not exclude the possibility that a different tribunal looking at the case under a different legal mechanism and record could conceivably reach a different conclusion; but this Panel can only make its assessment on the probabilities and record it sees before it in these proceedings under the Policy.