The Complainant is Paul Hartmann AG of Heidenheim, Germany, represented by Kaufmann & Stumpf, Germany.
The Complainant has named two Respondents: Domains by Proxy, LLC is simply a privacy domain registration service. The Registrar has confirmed that the registered owner of the domain name is Patrick Schoutens of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“U.K.”) Patrick Schoutens is represented by Michalsons Attorneys of South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On August 14, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 16, 2012.
The Center verified that the Complaint together with the amendment to 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 August 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2012. The Response was filed with the Center on September 4, 2012.
The Center appointed Thomas Legler as the sole panelist in this matter on September 17, 2012. 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 Complainant, Paul Hartmann AG, is a corporation based in Germany, which supplies products and services in the sector of wound care, incontinence hygiene and infection protection. One of these products is HydroTac, a hydrophilic foam dressing coated with a hydrogel net which is used for wound healing.
The Complainant has rights in the trademark HYDROTAC, for which it holds the following registrations:
- European Trademark Registration No. 7073307 for HYDROTAC in respect of international classes 5 and 10 which was registered on February 12, 2009; and
- International Trademark Registration No. 1029340 for HYDROTAC in respect of international classes 5 and 10 which was registered on October 13, 2009; and
- United States Trademark Registration No. 3,756,587 for HYDROTAC in respect of international classes 5 and 10 which was registered on March 9, 2010.
The Complainant provided evidence in support of the above mentioned trademark registrations.
The domain name was registered on February 10, 2010.
The domain name points to a webpage with sponsored links and states the following: “This Web page is parked for FREE, courtesy of GoD”.
The Respondent states that Patrick Schoutens is the executive director of the company Soil Solutions Limited. The company of the Respondent appears to be active in the sector of Soil Improvement & Stabilization, Dust Control, and Erosion Control, across the construction, mining, equestrian and development industries. According to the documents received from the Respondent, the company Course Solutions Limited has developed a product called “hydrotac” which is used for hydroseeding of golf courses, sports fields, airstrips, etc. The Respondent provided the Panel with documents in regard to the application for the registration of the trademark “hydrotac” which was filed in South Africa on February 2, 2010. 5. Parties’ Contentions A. Complainant
The Complainant states that the domain name is identical to its trademark HYDROTAC.
Furthermore, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the domain name since the Respondent did not made a bona fide use of the domain name in connection with a bona fide offering of goods and services. For this purpose, the Complainant included a printout of the website of the Respondent in its annexes to the Complaint and alleges that the domain name directs to a website that is used as a parking site in order to deceive consumers and direct them to other parties based on an illegal pay-per-click model. In addition, the Complainant contends that the Respondent has no relationship with the latter and has consequently not been authorized to use the domain name.
Finally, the Complainant submits that the Respondent has registered and is using the domain name in bad faith in order to capitalize on the Complainant’s goodwill. According to the Complainant, the Respondent must have been aware of the Complainant’s rights in the HYDROTAC trademark and intentionally selected, registered and used the domain name in order to attract customers to its website, i.e., obtaining click-through commissions from the owners of the sites to which it links.
The Respondent’s bad faith is finally also evidenced by the fact that the Respondent was already involved in other UDRP cases with a similar fact situation. These cases corroborate the Respondent’s behaviour, which fits into a general pattern of conduct.
For all these reasons and in accordance with paragraph 4(b) of the Policy, the Complainant requests the Panel to transfer the domain name to the Complainant. B. Respondent
In his Response dated September 4, 2012, the Respondent rejects all the arguments of the Complainant.
In the first place, the Respondent acknowledges that the trademarks of the Complainant are functionally the same as the portion that precedes the top-level of the domain name. However, the Respondent is of the opinion that this alone is insufficient to satisfy the first requirement of paragraph 4(a) of the Policy. According to the Respondent, the Complainant has not shown that the identity of the trademarks and the domain name will lead to confusion or dilution of the trademarks. The Respondent quotes two U.S. court decisions in support of its argumentation. The Complainant should have submitted evidence that its trademark is famous and deserves worldwide protection. The Annexes 4 and 5 of the Complaint do not show that the trademark has been used in South Africa, where the Respondent markets its product “Hydrotac”. Apart from that, the Respondent uses “Hydrotac” to refer to a product for hydroseeding while the Complainant uses the trademark HYDROTAC for a medical wound dressing.
Furthermore, the Respondent alleges that he has rights or legitimate interests in respect of the domain name. For this purpose, the Respondent explains that the domain name has only temporarily been parked in anticipation of using it to promote a hydroseeding chemical called “hydrotac”. This product is currently promoted on a website of the company “soil solutions” and in a specific brochure.
As regards the allegation of having registered the domain name for a PCC campaign, the Respondent states that he has never engaged in any PCC campaigns and the website is a clear default parked domain page which is used by the Respondent’s hosting provider in order to inform visitors that the domain name is registered and that its services are available to others who wish to register a domain name from that hosting provider. Apart from that, the Respondent was unaware of the Complainant’s trademark and the only document that could be visible to the public in South Africa is in German, a language the Respondent does not understand.
The Respondent also denies having registered and used the domain name in bad faith. According to the latter, he has not acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant or to prevent the Complainant from reflecting its trademark in the domain name. Also, the Complainant and the Respondent are not competitors, and the Respondent has never heard of the Complainant. Therefore, it is impossible that the Respondent has intentionally registered the domain name to capitalize on the Complainant’s goodwill.
In regard to the three UDRP cases cited by the Complainant, the Respondent contends that these cases apply to “Domains by Proxy”, which is a third party service provider. This service has only been used by the Respondent to protect its personal information that he would have ordinarily been required to disclose when registering a domain name.
Furthermore, the Respondent stipulates that it is the duty of the Complainant to establish proof in regards to its allegation of the bad faith and the harm that has been caused by the domain name. In particular, the Complainant should have established its global popularity, which deserves a worldwide protection.
As a final point, the Respondent invited the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant according to paragraph 15(e) of the Rules. The Respondent states that the fact that the Complainant has decided to proceed with its Complaint after having received an email from the Respondent setting out his rights and legitimate interests in the domain name is relevant to a finding of Reverse Domain Name Hijacking. As a result, the Complaint was brought in bad faith and is abusive. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements. A. Identical or Confusingly Similar
The Complainant submitted evidence showing that it has established rights in the trademark HYDROTAC. The Complainant holds various trademark registrations in regard to the trademark HYDROTAC, including international trademark registration No. 1029340 registered in 2009 and European trademark registration No. 7073307 registered in 2009. The above registrations of the mark HYDROTAC predate the registration of the domain name.
As regards the first element of paragraph 4 of the Policy, the Panel finds that the domain name is identical to the trademarks of the Complainant. The fact that the trademark is written with a capitalized “T” is irrelevant in the assessment of the identity or confusing similarity. There is hence no reason to carry out an analysis for a possible confusion as the domain name is not only similar but identical to the trademark.
In addition, it is well established that the specific top level domain - in this case .info - is not an element of distinctiveness that can be taken into consideration when evaluating the identity or the similarity of the Complainant’s trademark and the domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
Accordingly, the Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent is not known under the name “Hydrotac”; rather it uses this name for promoting one of its products. As the website corresponding to the domain name is currently parked and not used (yet), no conclusion can be drawn from that, with the consequence that the Respondent cannot be considered as being commonly known by the domain name in the sense of paragraph 4(c)(ii) of the Policy.
The Respondent indicates in his Response that the domain name will be used in order to promote the product “Hydrotac”. Thus, there seems to be a commercial use of the domain name which excludes the application of paragraph 4(c)(iii) of the Policy.
However, the main question here is whether the Respondent has made use of, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy).
According to the Complainant, the Respondent has not made a bona fide use of the domain name, as the website corresponding to the domain name is a parking site that is being used in order to deceive customers (the so-called “pay-per-click model”).
The Respondent denies having registered the domain name on an improper basis and contends that the website corresponding to the domain name is only parked for a limited period of time in order to create a website which will promote the product “Hydrotac”, a hydroseeding chemical.
As regards the burden of proof, the Complainant is required to establish prima facie that the Respondent does not have any rights or legitimate interests in the domain name. Once such evidence has been provided, the Respondent carries the burden of production to show rights or legitimate interests (see Gowrings Mobility Group Limited v. Cyber Domain Services Pvt.Ltd. / PrivacyP,WIPO Case No. D2010-0706).
In the case at hand, the Respondent submits evidence in his Response dated September 4, 2012 by which he intends to show his bona fide use of goods in providing the Panel with a printout as well as a brochure reflecting the fact that the product “Hydrotac” is at present used in the market.
As previously noted under Factual Background, the Respondent appears to be active in the sector of Soil Improvement & Stabilization, Dust Control, and Erosion Control, across the construction, mining, equestrian and development industries. According to the documents received from the Respondent, the company Course Solutions Limited has developed a product called “Hydrotac” which is used for hydroseeding of golf courses, sports fields, airstrips, etc. The Respondent provided the Panel with documents in regard to the application for the registration of the trademark “Hydrotac” which was filed in South Africa on February 2, 2010.
On the one side, the Respondent does not show that he uses the domain name for the promotion of that bona fide use. Also he has not submitted any evidence showing that he has made preparations for the set-up of a website under the domain name in order to promote his product.
On the other side, the fact that the domain name points at present to a parking site is per se no indication for assuming that the Respondent is making profit via a PPC agreement.
The Panel finds that the situation would need to be further clarified to be conclusive. This administrative proceeding is, however, not suited for such an investigation. The Panel will now address the third element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.”
The Complainant contends that the Respondent must have been aware of the Complainant’s rights in the HYDROTAC trademark when he registered the domain name. The Panel does not share this opinion. The Complainant has not submitted any evidence that its trademark and the related products are widely known in particular in South Africa, where the Respondent markets its product “Hydrotac”. In addition, the Complainant’s mark is not famous, triggering the assumption of global awareness of the well-known mark (see e contrario, LEGO Juris A/S v. softwareegypt,WIPO Case No. D2012-1238). The Complainant has further not submitted any other proof showing that the Respondent should or could have been aware of the Complainant’s trademark for other reasons, i.e., that it had been specifically aware of the Complainant’s registration.
Consequently, there is no evidence that the Respondent registered the domain name for setting up a parking site in order to intentionally attempt to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark. The fact that the Complainant’s and the Respondent’s products are of a different nature corroborates this finding.
For the same reason it cannot be held that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, since indeed the Parties are not competitors.
Furthermore, the Panel has no evidence that “the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct”. By quoting three UDRP cases, the Complainant tried to refer the Panel’s attention to a situation of a pattern of conduct. However, these cases are of little help as the common Respondent is Domains by Proxy, i.e., a privacy domain name registration service and not the present Respondent.
No other indicia has been submitted by the Complainant which would be a sign of the Respondent’s bad faith.
In light of the above facts and reasons, the Panel considers that the domain name was not registered in bad faith and that the Complainant has failed to prove the third element of the Policy. D. Finding of reverse domain name hijacking
The Respondent claims that the Panel should examine a finding of Reverse Domain Name Hijacking against the Complainant.
The Complainant has valid trademarks and was of the opinion that the Respondent did use the domain name in order to make profits by linking it to a parking site. In the Panel’s view, there is nothing wrong in prosecuting trademark rights on such a basis. Although the Complainant’s evidence was not conclusive enough to this Panel for ordering a transfer of the domain name, the Panel can see no gross negligence, let alone an intention on its side to harass the Respondent by instigating these administrative proceedings. Moreover, the Respondent does not submit any evidence for its claim, which is rather of speculative nature.
Therefore, the Panel declines to make a finding of Reverse Domain Name Hijacking against the Complainant. 7. Decision
For the foregoing reasons, the Complaint is denied.
Thomas Legler
Sole Panelist
Dated: October 11, 2012
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