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Generic Top Level Domain Name (gTLD) Decisions |
Humax Co. Ltd. v. Genmab A/S
Claim Number: FA0205000114301
PARTIES
Complainant
is Humax Co. Ltd., SeongNam-City,
KOREA (“Complainant”) represented by Bengi
Jun. Respondent is Genmab A/S, Koebenhavn K, DENMARK
(“Respondent”).
The
domain name at issue is <humax.biz>,
registered with Ascio Technologies Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Jaime
Delgado as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 16, 2002; the Forum
received a hard copy of the Complaint on
May 21, 2002.
On
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 17,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 31, 2002.
On 24 June 2002, pursuant to STOP Rule 6(b), the Forum
appointed Jaime Delgado as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Humax Co. Ltd owns the “HUMAX” trade, service marks,
registered in over 26 countries and pending in over 41 countries. These trade, service marks are identical to
the <humax.biz> domain name.
Humax Co. Ltd believes that Genmab A/S should be considered as having no rights or legitimate
interests in respect of the domain name.
Even though Genmab A/s submitted trademark registration application for
“HUMAX” brand in Europe in 31/08/2000, Genmab
A/S faces opposition from LABORATOIRES D'HYGIENE
ET DE DIETETIQUE (L.H.D.). Paris, France. (Opposition Number 000424020) The
dispute outcome of the “HUMAX”
trademark between Genmab A/S and L.H.D Paris,
France, is not known yet.
Humax Co.Ltd believes that Genmab A/S registered the domain in bad faith to intentionally
attempt to attract, for commercial gain, Internet users to its Website or other
on-line location, by creating a likelihood of confusion with Humax Co. Ltd.’s. marks as to the
source, sponsorship, affiliation or endorsement of Genmab A/S’s Website or location of the product or service on Genmab A/S’s Website. Humax believes that the domain name in
question <humax.biz> is
identical to its trademarks and that potential visitors to its site will be
confused by Genmab’s A/S site.
Humax Co. Ltd’s “HUMAX” brand STBs are best selling
Set-Top box in Europe and very well known to consumers around the world; Genmab A/S must have been very well
aware of the “HUMAX” brand and registered the domain name in question to
intentionally cause consumer confusion
with Humax’s mark. This would create a false sense of
sponsorship, affiliation or endorsement with Humax Co. Ltd.
From
popular web search engines such as AltaVista.com and Google.com, you would
mostly find about Humax Co. Ltd’s
digital Set-Top Boxes, not Genmab A/S’s
product.
Humax Co. Ltd believe that Genmab
A/S’s use of the <humax.biz>
domain name will cause likelihood of confusion as to the source of the domain
because it is identical to Humax Co. Ltd’s
mark.
B.
Respondent
Respondent does
not contest that the disputed domain name resembles the trademark “HUMAX”
allegedly registered to the Complainant
in various jurisdictions. However,
Respondent has rights and legitimate interests in respect of the disputed
domain name.
Respondent is one of Europe’s leading biotechnology
companies within the field of research and development of fully human
antibodies.
It is a Danish public company that was founded in 1999 and in 2000
listed on the Copenhagen Stock Exchange, (Denmark) and Neuer Mark
of the
Frankfurt Stock Exchange, (Germany). It has subsidiaries in the Netherlands,
the UK and the USA.
Respondent creates and develops human
antibodies for the treatment of life-threatening and debilitating diseases and
has numerous
products in development to treat cancer, rheumatoid arthritis and
other inflammatory conditions.
As trademark for its products Respondent
uses the word “HUMAX” identical to the disputed domain name. “HUMAX” has been
in use since
2000 and has been extensively used, internally as well as
externally, in public material as well as on the Internet.
The word is a short form of Human Monoclonal
Antibodies. The last letter "X" has been added to create
positive associations such as "maximization" of the treatment.
The
mark “HUMAX” is used in combination with a description of the specific disease
target or antibody in question, such as “HUMAX
CD-4”, “HUMAX-IL15”, and
“HUMAX-Lymphomia”.
On January 22, 2001, Respondent obtained
Danish national trademark registration on “HUMAX” in the classes 5, 41and 42.
On February
19, 2001 Respondent obtained Danish national trademark registration
on “HUMAX” in the class 1.The opposition periods for these registrations
have
expired and the registrations are final.
Respondent did on February 8, 2001 obtain
international (WIPO) trademark registration through the Madrid Agreement and
Protocol on
“HUMAX” (classes 1, 5 and 42) with Hungary, Japan, Norway, Poland,
Russian Federation, Switzerland and Turkey designated. Registrations
in most of
these countries have been completed.
Further, in September 2000 Respondent
applied for registration for a trademark for HUMAX in the United States (2000)
and in February
2001 Respondent applied for trademark registration of HUMAX in
Israel.
Finally, Respondent confirms
Complainant’s information that Respondent has filed for European Trademark
registration of “HUMAX” (classes
1, 5 and 42).
Respondent contends that Complainant’s
information concerning an opposition made against Respondent’s European
trademark application
by Laboratories D’Hygiene et De Dietetique (France) is
irrelevant for these proceedings. In any event, Respondent can inform that
the
dispute has been settled amicably by way of a co-existence agreement between
Respondent and Laboratories D’Hygiene et De Dietetique.
Respondent denies as groundless
Complainant’s allegations that Respondent should be considered as having no
rights or legitimate interest
in respect of the disputed domain name and
Respondent claims that Complainant has not met its burden of proof to establish
that this
should be the case. Rather, on the basis of the above description it
is clearly established that Respondent has rights as well as
legitimate
interest in respect of the disputed domain name on the basis that the Respondent
has used the trademark HUMAX identical
to the disputed domain name for an
extensive period of time and is the owner of various trademarks and trademark
applications that
are identical to the disputed domain name.
Respondent
denies that the disputed domain name has been registered or used in bad faith
as alleged by Complainant. Rather, the disputed
domain name has been registered
and is intended to be use in a bona fide offering and marketing of Respondent’s
products and services.
Respondent has not tried to and has no
intention of selling, renting, or otherwise transferring the disputed domain
name to Complainant
or to a competitor of the Complainant. Rather Respondent
intends to use the disputed domain name for its own commercial purposes
by directing
visitors to Respondent’s own home page.
Respondent denies being aware of Complainant’s brand when
applying for the disputed domain name. Respondent denies that the registration
and use of the disputed domain name is an intentional attempt to attract for
commercial gain Internet users to Respondent’s homepage
by creating a
likelihood of confusion with Complainant’s “HUMAX” mark. Respondent has no
interest in (nor wish to) being affiliated
or associated with the products,
trademarks or reputation of Complainant. No competition exists between
Complainant and Respondent
as they operate in completely different trades and
promote different types of products. Pharmaceutical products do not compete
with
digital satellite, cable Set-top boxes and any notion that Respondent will
benefit from any likelihood of confusion with Complainant’s
trademark or
products is obviously groundless.
A comparison between the different
classes for which the Respondent and the Complainant has filed or already
obtained trademark registration
also demonstrates that the parties use the mark
for different purposes.
Finally, as shown by the Respondent’s
bona fide use of the “HUMAX” name and the fact that there exists no competition
between Respondent
and Complainant it is clearly demonstrated that Respondent
has not registered or used the disputed domain name in order to prevent
Complainant from reflecting its mark in a corresponding domain name or for the
purpose of disrupting the business of Complainant.
Humax Co. Ltd., is a digital satellite and cable
Set-Top Box (STB) manufacturer. Humax
Co. Ltd has used the “HUMAX” mark in commerce in relation to its digital
satellite, cable Set-Top Box business and has registered the “HUMAX”
mark in
South Korea in 1994, in Europe in 1998 and in the United States in 2001.
Humax
Co. Ltd owns the “HUMAX”
trade and service marks in over 26 countries and has pending applications in
over 41 countries. These trade and
service marks are identical to the <humax.biz>
domain name.
Respondent does
not contest that the disputed domain name resembles the trademark “HUMAX”
allegedly registered to the Complainant
in various jurisdictions. However,
Respondent claims that it has trademark and other rights and legitimate
interests in respect of
the disputed domain name.
Paragraph 15(a) of the STOP 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.”
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
The domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “. biz” generic top-level domain (“gTLD”) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Humax Co. Ltd registered HUMAX in South Korea in 1994,
in Europe in 1997 and in the United States in 1999 thus, Complainant has
established its
right in the “HUMAX” mark.
The
disputed domain name incorporates Complainant's mark in its entirety and merely
adds the generic top level domain "BIZ."
The use of a "BIZ"
is insignificant when determining whether a domain name and a mark are
identical since the TLD is a
required element in domain names. See Pomellato S.p.A. v Tonetti, D2000-0493 (WIPO
July 7, 2000) (finding<pomellato.com>
identical to Complainant's mark because the gTLD "com" after the name
POMELLATO is not relevant); see also Visit
Am.Inc. v Visit am. FA 95093 ( Nat. Arb.Forum Aug.14,2000) ( finding that the
"com" is part of the Internet address and does not add source
identity significance). The disputed domain name is, thus, identical to
Complainant's mark. Furthermore, Respondent does not contest
that the disputed
domain name is identical to the trademark HUMAX.
Accordingly,
the Panel finds that Policy Sec.4 (a)(1) has been satisfied.
Respondent
is a biotechnological company within the field of research and development of
fully human antibodies. As trademark for
its products Respondent has been using
the word “HUMAX”, identical to the disputed domain name. <humax.biz> since 2000 and has been
extensively used, internally as well as externally in public material as well
as on the Internet.
Respondent
obtained international (WIPO) trademark registration through the Madrid
Protocol and from the Danish Patent and Trademark
Office. Respondent has
pending registrations for “HUMAX” in the United States Patent and Trademark
Office, in Israel and in the Office
for Harmonization in the Internal Market.
It
must be noted that the products for which Respondent uses its “HUMAX” mark are
of different classes than those of the Claimant
so that there is little
likelihood of confusion. Particularly, since the products and services of each
of the parties are not generally
provided to the general public but rather to
specialized, knowledgeable customers.
Under
STOP Policy Sec. 4(c) the Respondent may demonstrate its rights or legitimate
interest by proving, inter alia, that Respondent
is the owner or beneficiary of
a trade or service mark that is identical to the domain name, as is the case
here.
Respondent
claims commercial fair use of the word “HUMAX” made directly by Respondent and
not through a third party.
Accordingly,
the Panel finds that Policy Sec. 4(a)(2) has not been satisfied. Respondent has
rights or legitimate interest. Consequently,
the Complaint should be dismissed
and subsequent challenges to this domain name, as against the Respondent, under
STOP Policy shall not be permitted
against the same domain name.
For
bad faith to exist there must be a conflict and a potential for trademark
infringement. In the instant case the products and services
covered by the
respective marks are so different that there is no potential for such a
trademark infringement. Besides, both parties
appear to have applied for the
same mark in different jurisdictions, for different products, not in the same
field of business.
Respondent
has made no offer for sale and has no interest to sell the name.
Respondent’s
intention is not to disrupt the business of Complainant as the field of their
respective effective customers is quite
different, no one seeking digital satellite
and cable products or services would confuse them with a human antibody.
Accordingly,
the Panel finds that Policy Sec.4 (a) (3) has not been satisfied and the
Complaint should be dismissed.
DECISION
The Complainant
established only one of the three elements required under the STOP Policy.
The Panel
concludes that the requested relief should not
be granted and the domain name
<humax.biz> is not to be transferred from the Respondent to the
Complainant. No further challenges
against this domain name shall be permitted under the STOP Policy.
Jaime Delgado, Esq. Panelist
Dated: 14 July 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1145.html