Humax Co. Ltd. v. Genmab A/S
Claim Number: FA0205000114301
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.
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.
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.
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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