The Known and Unknown Unknowns: I Have Never Heard of You or Your Trademark
Paul Hartmann AG v. Patrick Schoutens,WIPO Case No. D2012-1601
Domain name: hydrotac.info
An interesting case on proving, or not proving, bad faith registration.
The Complainant was a German company in infection protection. One of its products is HydroTac, a hydrophilic foam. Complainant had trademarks for HYDROTAC. Respondent registered the domain name hydrotac.info. The domain name pointed to a webpage with sponsored links and the following: “This Web page is parked for FREE, courtesy of GoDaddy.com”. Respondent was active in Soil Improvement and worked with a company that had developed a product called “hydrotac” for hydroseeding of golf courses, sports fields, airstrips, etc. The Respondent had applied to register “hydrotac” as a TM in South Africa.
The Panel decided that the issue of Rights and Legitimate Interests could not be resolved under the UDRP, but went on to look at bad faith.
The Complainant’s case was that Respondent must have been aware of the Complainant’s rights in the HYDROTAC trademark when he registered the domain name. This is an issue that arises frequently and it is hard to resolve because the Complainant says the Respondent must have been copying its TM, but the Respondent says it was not and in any event how was it expected to know of the Complainant?
The Panel made some useful observations on how these sorts of questions should be approached. Not surprisingly, they show that each case will depend on the evidence. Some of the areas the panel looked at and its comments are as follows:
Evidence of Being Well Known
“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).”
Should or Could Have Been Aware of Trademark
“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.”
Conclusion: No Evidence
“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.”
Is It Disrupting Business, Then?
“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.”
Nor was there evidence to support any of the other criteria of bad faith, so the panel held that there was no bad faith registration and the claim was denied.