The Complainant is Schering Aktiengesellschaft, a company organized under the laws of Germany, having its principal place of business in 13342 Berlin, Germany ("Complainant").

The Respondent is METAGEN GmbH, organized under the laws of Germany, having its principal place of business at 79297 Winden, Germany ("Respondent").

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <metagen.com> ("Domain Name"), registered with Network Solutions, Inc., Herndon, Virginia, USA ("NSI" or "Registrar").

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules") was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 3, 2000 by e-mail and was received on July 7, 2000 in hardcopy. The hardcopy version of the Complaint was signed on July 5, 2000, but is inconsistent with the e-mail version (see below No. 6 para. 2). The Acknowledgement of Receipt of Complaint was submitted by WIPO Center on July 7, 2000.

On July 7, 2000 a Request for Registrar Verification was transmitted to the Registrar, NSI, which confirmed with its Verification Response of July 14, 2000 that it had received the Complaint, that the disputed domain name was registered with NSI, and that the Respondent was the current registrant. In addition, the Registrar forwarded the WHOIS details, confirmed that its Service Agreement 5.0 was in effect, and stated that the Domain Name was on "active" status.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on July 14, 2000. The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.

No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent on July 17, 2000, setting a deadline of August 6, 2000, by which the Respondent could file a Response to the Complaint.

On August 4, 2000, the WIPO Center received Respondent’s Response and confirmed the receipt with an Acknowledgement of Receipt (Response) on August 7, 2000.

Both Complainant and Respondent had requested a three-member panel. Consequently, the WIPO Center invited Mr. Bernhard F. Meyer-Hauser, Mr. Thomas Hoeren and Mr. Christian Gassauer-Fleissner to serve as panelists in Case No. D2000-0728, and transmitted to them a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received the Statements of Acceptance and Declarations of Impartiality and Independence from all panelists, the WIPO Center transmitted to the parties on August 29, 2000 a Notification of Appointment of Administrative Panel and Projected Decision Date. The projected decision date was September 11, 2000. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

Complainant submitted a Reply on August 18, 2000 and Respondent a Surreply on August 25, 2000. An additional submission by Complainant dated August 31, 2000 was received by the WIPO Center on September 1, 2000. On September 8, 2000, after the decision of the Panelists was already written and exchanged in draft form, the Panelists received additional submissions from the Parties through the WIPO Center.

4. Factual Background

Complainant is the owner of the German trademark No. 398 14 634 "metaGen". The application date of this trademark is March 12, 1998. The registration date is August 18, 1998, in international class 5 for pharmaceutical products and health care preparations.

Furthermore, Complainant has 100% ownership in its subsidiary "MetaGen Gesellschaft für Genomforschung mbH", Berlin, Germany ("MetaGen Gesellschaft"). This subsidiary has been registered under this name with the Registry of Commerce of Berlin Charlottenburg (Germany) on February 11, 1997 (Reg.No.: HRB 61730). The business purpose of MetaGen Gesellschaft is research on human gene therapy, cancer research and the exploitation of the results.

Respondent is affiliated with numerous other companies which all share the part "Meta" in their name, such as Metatech GmbH, Metaconsult GmbH, Metapark GmbH, Metatools GmbH, Metafinanz GmbH, Metasoft GmbH, Metasystem GmbH and Metacom GmbH (the "Meta-group").

Respondent’s former company name was Metaserve GmbH. The change of its name to Metagen GmbH was decided by a shareholder’s resolution of February 25, 1998 and was registered in the Commercial Register of Emmendingen (Germany) on August 31, 1998. The business purpose of Respondent is the further development of the genetic technology, main emphasis in genetic information technology.

According to the NSI WHOIS database, the Domain Name registration record was created on March 26, 1998.

Respondent’ affiliated company "Meta Park Gesellschaft für Technologietransfer mbH" applied for registration of the trademark "Metagen" with the German Patent and Trademark Office on June 23, 2000 for the following goods and/or services: "Installation and operation of computer data banks, production of programs for data processing and recording; document management and archives, production of information systems, service of data banks, development and maintenance of computer software; electric and electronic devices and instruments for data banks, computer programs on data carrier; software."

In the following, the relevant dates regarding trademark and company name registrations are summarized in chronological order:

February 11, 1997: Registration of company name "MetaGen Gesellschaft für Genomforschung mbH" of Complainant’s subsidiary;

February 25, 1998: Respondent’s shareholders decide to change the company name from "Metaserve GmbH" to "Metagen GmbH";

March 12, 1998: Complainant applies for the registration of the trademark "metaGen";

March 26, 1998: Respondent registers the domain name "metagen.com";

August 18, 1998: Complainant’s trademark "metaGen" is registered;

August 31, 1998: Respondent’s company name "Metagen GmbH" is registered;

June 23, 2000: Respondent applies for a trademark registration for "Metagen".

On June 21, 2000 Complainant sent a letter to Respondent asking it to transfer the Domain Name to MetaGen Gesellschaft. Respondent refused to do so and suggested a collaboration of Complainant and Respondent instead.

The Regional Court of Mannheim, Germany (Landgericht Mannheim) on June 30, 2000 prohibited the Respondent, by way of a temporary restraining order without oral hearing due to urgency, to use or allow the use of the designation "metagen.com" as a domain name on the Internet.

5. Parties’ Contentions

A. Complainant

Complainant contends that the use and registration of the Domain Name by Complainant infringes the rights of MetaGen Gesellschaft in the name "Metagen" and Complainant’s rights in the German trademark "metaGen".

The company name is identical to the Domain Name and therefore the target audience of both parties will not notice any difference between both companies when searching the Internet.

Complainant contends that its trademark has been filed prior to the registration date of the Domain Name. Moreover, the business purpose of both parties are genetic engineering and information technology. Therefore, both parties have the same target audience. This target audience of both parties consists mostly of medical specialists, research scientists and pharmacists. If Respondent would keep the Domain Name these people would assume that both parties belong to the same group of companies or cooperate at least.

Complainant is recognized as a research based company which produces and sells successfully innovative and high quality products worldwide since more than hundred years. By changing its company name into "Metagen" and registering the Domain Name, the Respondent showed that it wanted to take advantage of the good reputation of Complainant. This is also evidenced by the fact that Respondent suggested a collaboration between Complainant and Respondent.

Complainant contends that Respondent decided to change the company name to Metagen GmbH long time after the foundation of MetaGen Gesellschaft which had been reported by nationwide newspapers. It is not relevant that Respondent’s shareholder resolution was adopted before the filing of Complainant’s trademark with the German patent and trademark office.

Respondent owns the disputed domain name in bad faith at least after it had received Complainant’s warning letter by e-mail on June 16, 2000 (the date of warning letter according to the Complaint is June 21, 2000). Respondent filed its application for registration of the trademark "Metagen" with the German patent and trademark office after it received the warning letter and therefore is in bad faith.

In addition, Complainant asks the WIPO Center to postpone the decision because of the pending procedure in the same matter before the Regional Court of Mannheim.

B. Respondent

Respondent contends that the conditions of paragraph 4(a) of the Policy are not met and that therefore Complainant can not demand the assignment of the Domain Name.

Respondent contends that the Domain Name is neither identical with MetaGen Gesellschaft für Genomforschung, the 100 % subsidiary company of the Complainant, nor is it similar enough for mix-ups to occur, since Complainant’s subsidiary company uses the addition "Gesellschaft für Genomforschung mbH" and therefore is distinguished clearly enough from the Domain Name. The Domain Name is only identical with trademark number 398 14 634 "metaGen" owned by Schering AG.

Respondent has its own rights and legitimate interest in using the Domain Name. Furthermore, Respondent neither registered the Domain Name in bad faith, nor did it use it in such a way.

Respondent contends that it has been using the company name "Metagen" for more than 2 years. It is known under that company name within the relevant circles and highly thought of as a famous software enterprise. It was founded on February 11, 1992, then under the name "Metafab Gesellschaft für industrielle Software-Entwicklung mbH" and in the meantime also used the name "Metaserve Gesellschaft für Informatik- und Kommunikationsdienstleistungen mbH". On June 23, 2000, Respondent applied for registration of the trademark "Metagen". Therefore Respondent has its own rights to the sign "Metagen". It has clearly legitimate interests regarding the Domain Name.

Respondent contends that it is not the duty of the administrative panel to establish whether the Complainant has better rights, but only whether the Respondent has any genuine rights or legitimate interest regarding the Domain Name. With a view to the company of the Respondent and the application for registration of the trademark "Metagen", this is the case. Furthermore, the Complainant does not have better rights to the sign "Metagen" than the Respondent because there is no danger for mix-ups between Schering AG / metaGen Gesellschaft für Genomforschung mbH on the one hand and the Respondent on the other. While Schering AG / metaGen Gesellschaft für Genomforschung mbH are companies that produce and distribute medicine, the Respondent exclusively deals with computer software. The trademark "Metagen" owned by the Complainant consequently protects only pharmaceutical goods and healthcare products. The Respondent has never dealt with pharmaceutical goods or healthcare products and does not intend to do so in the future. As it has done in the past it will keep on distributing computer software. The claim of the Complainant that both companies address the same field of customers is not justified just because the software might be especially useful in the field of gene research. The claim by the Complainant that both parties work in the fields of genetic engineering and information technology is therefore wrong. Fact is that the Complainant alone works in the field of gene research while the Respondent exclusively works in the field of information technology.

Furthermore, the claim made by Complainant that Respondent had registered the Domain Name in bad faith to benefit from the good reputation of the Complainant is wrong. It is also undisputed that both the managing director of Respondent, Prof. Dr. Ing. Michael Schönemann, and his companies of the Meta-group, have an excellent reputation in their field of business which is computer software. Therefore, it is not apparent why Respondent by using the company name "Metagen" should try to cling on the good reputation of another company which has nothing to do with its field of business.

According to Respondent, the timing also shows that there was no malice in its actions. The trademark "metaGen" owned by the Complainant was registered on August 18, 1998. The application was delivered to the German patent and trademark office on March 12, 1998. The change in the name of Respondent from "Metaserve GmbH" to "Metagen GmbH" happened prior to that. It goes back to a shareholder resolution dated February 25, 1998. So, the change in the name of Respondent took place nearly a month prior to the application for the trademark by the Complainant. Furthermore, the managing director of Respondent, Prof. Dr. Ing. Michael Schönemann, was not aware of metaGen Gesellschaft für Genomforschung mbH at the time.

Prof. Dr. Schönemann has proven his good faith in using, registering and using the Domain Name in his letter of June 21, 2000, by suggesting to work together instead of fighting a legal battle. Neither did Respondent choose the company name "Metagen" to profit from the reputation of the Complainant, nor did it reserve the Domain Name to capitalize on it or hinder the Complainant. The Domain Name was registered with the intent to offer software products on the Internet only.

Respondent does not consent to postpone the decision because of the pending proceeding before the ordinary court in Mannheim.

6. Discussion and Findings

Procedurally, the ICANN Policy and ICANN Rules provide for one submission by each of the parties only, namely for a written Complaint and a written Response. Further statements and documents may be requested by the Panel in the Panel's sole discretion (Art. 12 of the Rules). Accordingly, there is no right of the parties to make additional submissions to the Panel if the Panel does not agree.

In the present case, both Parties spontaneously submitted additional statements and documents to the Panel. Although not bound to do so, the Panel accepted and considered the Parties’ second submissions after the Complaint and Response (Reply and Surreply). All further submissions of the Parties were not considered in order to treat them equally.

According to paragraph 3 of the Policy, a complaint shall be submitted in electronic form and in hardcopy. This, of course, means that the complaint has to be filed in duplicate and in identical versions. The Complainant’s submissions dated July 3, 2000 (e-mail) and July 5, 2000 (hardcopy) are not identical. Although the amendment of the complaint after the first filing date seems dubious and the submission of two versions of the same document could cause confusion, the Panel accepts the later submission and bases its discussions and findings on the content of the signed hardcopy.

It is mentioned in the parties submissions that currently a proceeding regarding the Domain Name is pending before the Regional Court (Landgericht) of Mannheim. The court will investigate other legal aspects of the case - such as competition law aspects, trademark aspects, etc. The Administrative Panel in an ICANN administrative proceeding is limited to the scope of review defined in the Policy and Rules. The courts are bound to apply the whole system of law. The Policy, the Rules and the Supplemental Rules are limited regulations regarding the admissibility of a registration of a top-level domain with accredited registrars which are adopted by the registering parties in the registration agreement. Therefore, this Administrative Panel’s decision is not prejudicial for any court.

For the above reason it is not necessary or useful to postpone the decision. The Panel will render its decision within the period set by the WIPO Center regardless of the pending proceeding before the Mannheim court.

According to Paragraph 4(a) of the Policy, Complainant must prove the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(ii) that Respondent has no legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and used in bad faith.

Identical or Confusingly Similar Domain Name

The domain name at issue is <metagen.com>. Complainant is the holder of the registered trademark "MetaGen" and its subsidiary is registered under the company name "metaGen Gesellschaft für Genomforschung mbH". Both, the trademark and the distinctive element of the company name ("metaGen") are obviously identical with the relevant part of the Domain Name. The typographical difference in writing (capital "G") is not relevant under the present circumstances.

Domain Name Registered and Used in Bad Faith

For simplicity reasons, the bad faith test shall be investigated prior to the examination of Respondent’s legitimate interests.

The explicit wording of paragraph 4 (a) (iii) requires that Respondent acted in bad faith when registering and using of the Domain Name. Such bad faith shall be proven by Complainant.

As mentioned above, there is a likelihood of confusion between the registered trademark and the Domain Name. However, Complainant has not demonstrated that this likelihood has been created by Respondent intentionally and for the purpose of attracting Internet users to its web site for commercial gain which, among other facts, would indicate bad faith.

Respondent has not only registered the Domain Name, but also the company name Metagen. The choice of that company name and its composition is understandable under the circumstances, since Respondent is a part of the Meta-group. Its business field is IT in the sector of genetic technology. In addition, Respondent applied for a trademark registration of "Metagen" in a different registration class than Complainant and it is possible that the trademark will be issued.

Therefore, the Panel has no indication that Respondent did register the Domain Name for the purpose of taking advantage of the reputation of Complainant. Respondent had the intention to use the Domain Name for its own purposes according to its fair businesses interests.

The Domain Name registration was carried out prior to the registration or publication of Complainant’s trademark, but after the registration of the company name of MetaGen Gesellschaft. In that connection, the managing partner of Respondent contends and declares in lieu of an oath that he was not aware of MetaGen Gesellschaft at the time of registration. Anyway, the sole knowledge (or the obligation to know) that a company is carrying the same company name as a registered domain name does not prove as such bad faith in the sense of the Policy.

Complainant’s warning letter to Respondent likewise did not automatically effect bad faith in Respondent’s mind. Obtaining knowledge, after having filed a request for a domain name registration, that an unrelated company has the same company name does not turn good faith into bad faith in the sense of the Policy.

Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, or prevent Complainant from reflecting the mark in its domain.

Complainant still has many possibilities to create a strong domain name such as, for instance "Schering-Metagen" or similar. The Panel, therefore, finds that bad faith by Respondent in registering or using the Domain Name has not been established.

Respondent’s Rights or Legitimate Interests in the Domain Name

According to paragraph 4 (a) of the Policy, all three elements listed in items (i) to (iii) need to be established cumulatively. Since the element of bad faith is not proven, the question of rights or legitimate interests of Respondent in the Domain Name needs not to be addressed in a final manner.

7. Decision

Complainant has failed to prove the necessary element that Respondent registered and used the Domain Name in bad faith. Therefore, the Panel decides to deny the remedies requested by Complainant pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules.

Bernhard F. Meyer-Hauser
Presiding Panelist

Thomas Hoeren Christian Gassauer-Fleissner
Panelists

Dated: September 11, 2000