License May Be Evidence of a Right But Is Not Evidence that Licensee Has the Right For Transfer of Infringing Domain Name

“Kineret” or “Kinneret” is the Biblical name for the Sea of Galilee. It is also the name of a drug produced by Swedish Orphan Biovityrum AB allegedly under license from Amgen Inc. While a licensee with authority to protect the trademark may have a right, a bare license is insufficient to maintain a UDRP proceeding. “The issue for the Panel [in Swedish Orphan Biovitrum AB (pub) v. Zahav.net Inc., D2011-0257 (WIPO March 18, 2011)] 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, Complainant failed to produce any evidence that it had trademark rights in “Kineret” to maintain a UDRP proceeding. The “extraordinary aspect of this Complaint” the Panel noted

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.

In any event, Amgen’s trademark 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.” The disputed domain name was registered in 1998.

Ordinarily, complainant’s failure to prove a trademark right is conclusive and would support dismissal of the complaint. In Swedish Orphan the Panel passed over the issue of the Respondent’s right or legitimate interests in the disputed domain names but opted to review the allegations of bad faith registration, presumably because “the Respondent has behaved somewhat erratically” in using the domain names. The question is whether the Respondent in 1998 had the KINERET trademark in mind when registering the domain names? The answer has to lie in response to a number of questions and can only come from the Complainant however “erratic” the Respondent in his present use of the domain names. The Panel frames two questions: 1) “When did it reach the market?” and 2) “When might the Respondent have been expected to have first learnt of its existence?”

Under trademark law, the filing date of a trade mark application on its own “is rarely likely to be determinative.” A trademark holder may prove a common law right extending backwards in time where the basis for the application is that goods are presently in commerce. In Swedish Orphan the evidence suggest that the Kineret drug reached market in 2001, and although the trademark application post-dated the domain name the first use in commerce predated it. “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.”

But, coincidences do happen. It is not a respondent’s burden to prove that it registered a domain name in good faith in the absence of evidence to the contary. “[T]he fact is … 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.”

 

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