WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swedish Orphan Biovitrum AB (pub) v. Zahav.net Inc.
Case No. D2011-0257
1. The Parties
The Complainant is Swedish Orphan Biovitrum AB (pub), of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants Dipcon AB, Sweden.
The Respondent is Zahav.net Inc. of Wilmington, Delaware, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <kineret.com> and <kinneret.com> (the “Domain Names”), are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 8, 2011, 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. The Center verified that 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 February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. The Response was filed with the Center on February 23, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 14, 2011. 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.
4. Factual Background
The Complaint contains no information on the Complainant. From its address it appears to be a company based in Sweden.
The Complainant claims to have the benefit of an exclusive trade mark licence from Amgen Inc. dated December 15, 2008 in respect of the latter’s KINERET trade mark, which according to a schedule attached to the Complaint appears to have been registered in many countries throughout the world in class 5. The Complainant has not produced to the Panel any evidence of the licence, nor has the Complainant produced to the Panel anything from the trade mark owner to indicate that it is content for the Domain Names to be transferred to the Complainant.
The Complainant exhibits a copy of Amgen Inc.’s CTM registration certificate for KINERET, namely registration number 571349 which was applied for on June 16, 1997 and registered on August 5, 1999.
The Domain Names were registered on April 21, 1998 and appear to have been used since at least 2001 to connect to a variety of directory and/or parking pages.
On May 11, 2010 consultants acting on behalf of the Complainant wrote a cease and desist letter to the Respondent seeking transfer of the Domain Names. The Respondent did not reply. The Complainant’s consultants sent a further letter on June 28, 2010 repeating their demands and offering reimbursement of domain name costs up to a maximum of USD 600. A further ‘chaser’ was sent by email on December 22, 2010. No replies were received.
The Respondent has produced a ‘web.archive.org’ print up of what it claims is its website connected to its <kineret.com> domain name as at September 25, 2001, which appears to be a directory site devoted to and/or directed at matters Israeli. The page features a copyright notice dated “1998-2001”.
The Complainant has produced versions of the website as at July 8, 2009 showing a <kineret.com> directory page featuring amongst others links to “Arthritis Pain Relief” and “High Human Growth Hormone” and a <kinneret.com> directory page featuring links to a different selection of sites such as hotels and card games. The Complainant has also produced “before and after” versions of the sites as at May 6, 2010 and May 18, 2010 straddling the date of the May 11, 2010 cease and desist letter. Finally, the Complainant has produced versions dated August 30, 2010.
Those of the 2010 webpage printouts which feature copyright notices feature notices dated “1998-2002”.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith.
The Respondent’s Response is in the form of an email to the Center reading as follows:
“The domain names kineret.com and kinneret.com were registered in good faith. Kineret or Kinneret (commonly spelled both ways) is the Hebrew Biblical name of the Sea of Galilee / Lake of Gennesaret / Lake Tiberias. http://en.wikipedia.org/wiki/Sea_of_Galilee).
It is the largest source of fresh water in Israel, that is why we chose this name for our website as a source for fresh news and information from Israel.
Kineret is a Hebrew word/name and is commonly spelled with a single "N" and double "NN", kineret/kinneret, that is why we registered and use both for our website. kineret.com and kinneret.com have been registered and used in good faith since 21-April-1998 as a legitimate source for Israeli news and directory of Hebrew sites. Please see a 3rd party website that is archiving websites on the internet for many years:
[Links are provided to cached webpages at "http://web.archive.org" dating back to 2001]
At the time of the domains registration, 21-April-1998 kineret/kinneret was known (for thousands of years) as a lake in Israel, not as a drug made by Amgen. According to The United States Patent and Trademark Office (USPTO) records Amgen's FIRST USE of "Kineret" was 26-Nov-2001 several years AFTER we registered the domains.
[There then follows an extract from the USPTO database for US Registration No. 2585682 KINERET for “pharmaceutical preparations for the treatment of autoimmune and inflammatory disorders in which Amgen Inc. appear to have made a first use claim from November 26, 2001.]
Amgen Inc. registered the domain: "kineretrx.com" in September 2001 for the drug "Kineret".
There are several products and services named after "Kineret", the Hebrew word for the Sea of Galilee. Kineret.com and Kinneret.com being used as a source of news and information is not confusingly similar to a drug by that name, and more so considering the fact that the drug became known to the public only several years after the legitimate registration and use of our domain names.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant claims trade mark rights in respect of Amgen Inc.’s KINERET registered trade mark by virtue of an exclusive trade mark licence dated December 15, 2008.
The Domain Names each comprise the generic “.com” domain suffix preceded by either the name KINERET or the name KINNERET. It being well-established that for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy the Panel may ignore the suffix, the Panel finds that the Domain Names are identical or confusingly similar to Amgen Inc.’s KINERET registered trade mark.
The issue for the Panel is as to whether the Complainant has any relevant trade mark rights. If it does indeed have the benefit of a trade mark licence as asserted by the Complainant, then it is likely to have the relevant rights. However, an extraordinary aspect of this Complaint is that it contains no background information on either the Complainant or the Complainant’s use of Amgen Inc.’s trade mark; nor, more fundamentally, does it exhibit the licence or any documentation to evidence the existence of the licence; still less does it feature any communications with Amgen Inc. to indicate that Amgen Inc. is happy for the Domain Names to be transferred to the Complainant.
There is insufficient evidence before the Panel to enable the Panel to find that the Complainant has any relevant trade mark rights.
C. Rights or Legitimate Interests
In light of the above finding and the finding under D below, it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
While the Complaint must fail in limine given the Panel’s finding under paragraph B. above, it is also the case that the Complaint fails under this head.
To succeed in a complaint under this head of the Policy, a complainant must normally show that at date of registration of the domain name or names in issue, the registrant had the complainant’s trade mark in mind. The Policy was designed expressly to protect trade mark owners against the bad faith registration of domain names featuring their trade marks.
The Respondent asserts that it registered the Domain Names for a reason having nothing to do with Amgen Inc.’s trade mark. It points out (correctly) that “Kineret” and “Kinneret” are Hebrew names for the Sea of Galilee. The Respondent produces evidence by way of the Web Archive WayBackMachine that from at least as early as 2001 the Domain Names were connected to directory websites appearing to relate primarily to Israel and matters Israeli.
The Complaint concentrates upon the Respondent’s recent use of the Domain Names to connect to parking pages, some of which feature links to health/pharmaceutical related websites. The Complainant contends that this is an abusive, confusing commercial use intended to attract Internet users to the Respondent’s websites.
The only evidence upon which the Complainant relies to demonstrate bad faith intent on the part of the Respondent at date of registration of the Domain Names is as follows, namely:
(1) The Amgen Inc. CTM registration for KINERET, while registered on August 5, 1999 was applied for on June 16, 1997, i.e. before the Domain Names were registered (April 21, 1998). (2) In 2009 in NAF Case No. FA0907001273984 Shamir Optical Industry Ltd., and Shamir Insight, Inc. v. Zahav.net Inc. the Respondent was found to have been guilty of bad faith registration and use of the domain name, <shamir.com>. The Complainant asserts that this is indicative of a pattern of bad faith registration and use.
As indicated above, the Panel has been provided with no information about the KINERET product of Amgen Inc.. When did it reach the market? When might the Respondent reasonably have been expected to have first learnt of its existence? The filing date of a trade mark application on its own is rarely likely to be determinative. According to the Respondent, Amgen Inc. made a first use claim of a date in 2001 and registered its <kineretrx.com> domain name in the same year, which may suggest that 2001 was when the product first reached the market. It is possible of course that plans for its launch were publicized at an earlier date and it may appear something of a strange coincidence that the initial trade mark application and registration of the Domain Names took place around the same time. Nonetheless, a coincidence it may well be and the fact is that there is insufficient evidence before the Panel for the Panel to conclude with any degree of confidence that the Respondent had the KINERET trade mark in mind when registering the Domain Names.
As to the alleged pattern of bad faith registration and use of domain names on the part of the Respondent, the Panel observes that the NAF decision is sparsely reasoned and appears to have relied heavily on the fact that the Respondent failed to respond. There is nothing in the cited decision to assist the Panel as to the goods for which the complainant’s trade mark had been registered, nor is there any information as to the date of registration of the domain name in issue. In other words, there is nothing in that decision to link the two cases and thereby establish a pattern.
More recently, and particularly around the time last year when the Complainant notified the Respondent of its cause for complaint, the Respondent has behaved somewhat erratically. The appearance of the websites has changed from time to time and, notably, the Israeli focus of the websites which, according to the cached pages accessible via the Web Archive WayBackMachine, was in place from at least 2001 to at least 2007 has been replaced by generic parking pages. Moreover, the Respondent failed to respond to any of the Complainant’s consultants’ letters. However, the Panel is not satisfied that this behaviour in 2010 is enough to establish on the balance of probabilities that 13 years ago when the Respondent registered the Domain Names (Hebrew names for the Sea of Galilee), the Respondent had in mind Amgen Inc.’s trade mark, a trade mark for a product which may not have been in the public domain when the Domain Names were registered.
For all the foregoing reasons, the Complaint is denied.
Dated: March 18, 2011