Dastek (Pty) Ltd v. Contactprivacy.com / Hanno Schumacher Case No. D2009-0659
1. The Parties The Complainant is Dastek (Pty) Ltd, of Pretoria, South Africa, represented by Bowman Gilfillan Inc., South Africa.
The Respondents are Contactprivacy.com of Toronto, Ontario, Canada and Hanno Schumacher of Grafschaft, Germany, represented by Schmitz Knoth Rechtsanwälte, Germany.
2. The Domain Name and Registrar The disputed Domain Name is registered with Tucows Inc.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2009. On May 18, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 18, 2009, 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 Complainant reflected this information in the Complaint as filed with the Center, and the Center sent an email communication to the parties on May 22, 2009 confirming the registrant’s identity. 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 May 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. The Response was filed with the Center on June 9, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 16, 2009. 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 is a South African company. According to the Complainant’s website, it is a family business with some 30 employees that operates an automotive service center in Pretoria. The Complaint recounts that in 1995 the company developed a device called the Unichip, which it manufactures and sells to other auto shops in South Africa and internationally. The Unichip, which has been improved in successive models, is a small “piggyback” computer that is connected to a motor vehicle’s existing computer control unit to allow a mechanic to better “tune” the engine and other systems, optimizing the vehicle’s performance and economy.
The Unichip is sold directly and through distributors in some 35 countries, including Germany. The Complainant asserts that it spends more than ZAR 20,000 monthly advertising the Unichip online and in published media, and it offers evidence that leading Internet search engines predominantly display results for the query “unichip” that relate to the Complainant’s products. Advertising submitted with the Complaint indicates that by February 1999 the Unichip was sold in more than 20 countries.
The Complainant operates a website (in English) at “www.dastek.co.za”. The home page is headed “Dastek” and “Home of the Unichip”. Archived versions of the website available from the Internet Archive Wayback Machine at “www.archive.org” show a similar home page as early as October 2000, with a 1998 copyright notice.
The Complainant began using the UNICHIP mark in advertising and sales in 1995. South Africa affords common law protection to unregistered marks in certain circumstances, but the record in this proceeding is insufficient to determine when the unregistered UNICHIP mark likely became protectable at common law. What is evident from extracts of the South African trademark registry is that the Complainant applied on August 26, 1998 to register UNICHIP as a trademark, and registration was granted on February 4, 2002.
The Domain Name was registered on February 13, 1999. As the registrant employed the Registrar’s domain privacy service, the registrant is listed in the WhoIs database as “Contactprivacy.com” at the Registrar’s address in Toronto, Canada. It does not appear that there is a legal entity by that name. Upon receipt of notice of this proceeding, the Registrar identified the registering party (who might be characterized as the beneficial owner of the Domain Name) as Hanno Schumacher of Graftschaft, Germany. A Response was submitted in this proceeding only on behalf of Mr. Graftschaft. Accordingly, the Panel refers henceforth to Mr. Graftschaft as the Respondent.
The Complainant furnished a screen shot of the German-language landing page to which the Domain Name resolved on May 25, 2009. The page prominently displayed advertising links for third parties in the automotive industry in Germany and Switzerland, some of them offering “chip tuning” or computerized tuning services, as well as the usual category links at the bottom to pages with third-party advertising for travel, investments, health, and other unrelated goods and services. The Complainant presumes that the Respondent benefitted commercially from this advertising use of the website associated with the Domain Name, and the Respondent does not deny this. It is also a reasonable assumption that at least some of the advertised automotive tuning services compete with the Complainant’s Unichip dealers in Germany.
The Domain Name now resolves to a website that simply announces, in German, that there is currently no public access to the website. The Respondent reports that he continues to use the Domain Name for three email addresses, which he characterizes as a private and noncommercial use of the Domain Name.
It is undisputed that there is a history between the Complainant and the Respondent. In 1998, some three years after launching the Unichip, the Complainant engaged in discussions with the Respondent with a view toward appointing him as its representative in Germany. According to the Complainant, it provided Unichip devices to the Respondent on an “order-by-order” basis (the Complaint attaches a November 1998 invoice for one such order), while holding out the possibility of entering into a distributorship agreement at such time as the Respondent found a suitable technical partner. The Complainant says that it subsequently received complaints from German purchasers concerning the lack of technical support and decided by the end of 1998 that it would deal directly with German dealers rather than appointing the Respondent as the Unichip distributor for Germany. The Complainant asserts, and the Respondent does not deny, that it so informed the Respondent at that time.
Shortly thereafter, in February 1999, the Respondent registered the Domain Name. The Complainant reports unsuccessful efforts at settlement discussions with the Respondent, including an offer by the Complainant to purchase the Domain Name for €10,000. Email correspondence from 2002 is included with the Complaint, alluding to the possibility of legal action if the Domain Name were not transferred to the Complainant.
The Response does not materially dispute this version of the transactions between the parties, but it adds information about the Respondent’s business activities. The Respondent has long been active in the field of information technology, and he says that his experience with chip technology was the impetus for exploring a relationship with the Complainant. The Response attaches two 1977 applications by the Respondent to the German Federal Patent Office in connection with a chip technology for use with coin-operated photocopiers. The Respondent asserts that he was also involved in developing and marketing a “SIM-KIT” translation chip that was later adapted for more universal applications as the “UNI Chip”, in collaboration with a German company called B.T.S. Vertreibsgesellschaft für Text- und Datensysteme GmbH (“BTS”). The Response annexes a purchase order from Ruhr Gas addressed to BTS, to the attention of the Respondent, for two “BTS SIM-KIT II” chips. The order is dated March 4, 1987. The Response does not include documentary evidence of his involvement with any product called the “UNI Chip”. The Respondent states that in the last few years he has pursued his idea of developing and marketing computer chips “less intensively”.
5. Parties’ Contentions A. Complainant The Complainant argues that the Domain Name is confusingly similar to its UNICHIP mark and that the Respondent has no rights or legitimate interests in the name.
The Complainant infers bad faith from the Respondent’s prior knowledge of the mark and his use of the Domain Name, until recently, to display third-party advertising links, presumably for commercial gain. The Complainant argues that there is no evidence of a legitimate reason for selecting and using a Domain Name confusingly similar to the Complainant’s mark. The Complainant suggests that the Respondent’s refusal to negotiate a settlement, and his use of a domain privacy service to register the Domain Name, are further indications of bad faith.
B. Respondent The Respondent argues that the Complainant’s trademark is not protected in Germany and that the Respondent has only used the Domain Name for a German website and private email, with little or no possibility of diverting Internet users seeking the Complainant’s products. The Respondent contends that the term “unichip” lacks distinctiveness and is used as part of several other trademarks held by a variety of companies. The Respondent had, and retains an interest in computer chip development and says that he registered the Domain Name for that reason. He did not approach the Complainant about selling the Domain Name, and he rejected the Complainant’s offers to purchase it. The Respondent contends that these facts demonstrate his good faith in registering and using the Domain Name.
6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds a registered trademark for UNICHIP. This is identical to the Domain Name (disregarding the nondistinctive top-level domain name “.com”) and suffices to establish the first Policy element.
B. Rights or Legitimate Interests
In 1998, before registering the Domain Name, the Respondent ordered Unichip devices from the Complainant for resale and discussed the possibility of acting as a distributor for the Complainant in Germany. However, it is undisputed that (a) the Complainant did not authorize the Respondent to use the UNICHIP mark in a domain name and (b) the Complainant rejected the Respondent as a potential distributor before the Respondent registered the Domain Name.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence in the record that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. The Respondent claims to have been involved with a “UNI Chip” product prior to registration of the Domain Name but offers no evidence to substantiate this claim. According to the Respondent, it was his “long-standing activity in the computer and chip business that made him register the Disputed Domain Name.” However, he shows no commercial use of the term “unichip” or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Respondent does not furnish persuasive evidence to support his contention that “unichip” is a generic term, and the record does not show that he used the Domain Name in a manner relevant to such a generic term. Instead, until recently, the Domain Name was used for what appear to be pay-per-click advertising links, chiefly sponsored by companies in the German and Swiss automotive industries. The Respondent does not deny the Complainant’s conclusion that the Respondent derived some pecuniary benefit from this advertising use of the Domain Name. This is not a legitimate noncommercial or fair use of the Domain Name. Moreover, it could not be considered a use in connection with a bona fide offering of goods or services if the Domain Name was selected and used for its trademark rather than generic value. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007 1141 (and cases cited therein). The evidence indicates that this was more likely than not the motivation for the Respondent’s choice, as discussed further below.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 implicitly relies on this paragraph, pointing to the Respondent’s actual knowledge of the Complainant’s UNICHIP mark and his use of the Domain Name to display third-party advertising relevant to computerized automotive tuning. The Complainant argues that there is no legitimate reason for selecting and using a Domain Name confusingly similar to the Complainant’s mark, and the Complainant cites as well the Respondent’s use of a private registration service and his refusal to sell the Domain Name to the Complainant.
The latter points are inconclusive of bad faith. Domain registration privacy serves a number of purposes, including the reduction of “spam” emails, and it did not prevent the Registrar from promptly identifying the Respondent on the occasion of this UDRP proceeding. The Respondent did not attempt to sell the Domain Name to the Complainant, and his refusal to transfer the Domain Name is not necessarily a sign of bad faith.
However, the timing of the Domain Name registration is damning, as is the subsequent use of the Domain Name. The Respondent had actual knowledge of the Complainant’s Unichip products, had ordered them for resale, and had very recently attempted to act as the German distributor. Shortly after being turned down by the Complainant, the Respondent registered the Domain Name identical to the name of the Complainant’s product. This hardly seems an innocent coincidence.
The Complainant’s mark was unregistered at the time the Respondent registered the Domain Name. However, the mark had been used internationally for more than three years by then and was the subject of a pending application for trademark registration. The Respondent was familiar with the Complainant’s intention to market its products under the UNICHIP brand in Germany, since the Respondent had negotiated to serve as the distributor. This circumstance could reflect bad faith for purposes of the Policy even before the Complainant perfected any trademark rights. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003 0845; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003 0320; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. 2003 0598 (UDRP panels finding bad faith in preemptive registrations of domain names with advance knowledge of trademark claims).
The Respondent asserts that his German-language website did not divert Internet traffic from the Complainant and was never meant to do so. But this overlooks the facts that (a) the Complainant’s Unichip products are sold in German-language automotive markets and (b) the advertising search software on the parking website associated with the Domain Name generated advertising links predominantly from those markets and featuring companies offering computerized engine tuning. Even assuming the Respondent did not actually manipulate the advertising search software (some Internet advertising services allow the subscriber to enter keywords), the Respondent was indisputably aware of the Complainant’s products and mark and should have anticipated this result when parking the Domain Name for pay-per-click advertising revenue. It appears that he has profited from it for years, without taking any steps to avoid confusion with the Complainant’s mark.
The Respondent claims he selected the Domain Name because of his longstanding interest in computer chips. He demonstrates that “unichip” appears in several other registered trademarks and product labels. But he does not establish that he was involved with any of those trademarks or products, and he does not present evidence to refute the Complainant’s point that the Complainant’s products are well-known and are the ones most prominently associated with “unichip” as an Internet search query. The Respondent does not establish that “unichip” is a dictionary word in German, English, or another language, or that it has a commonly accepted generic sense in the information technology industry, or that his use of the Domain Name was consistent with any such generic signification. Further, the Respondent’s commercial use of the Domain Name for third-party advertising was much more focused on automotive services - the Complainant’s industry - than on computer chips in general. And despite being involved with computer chip technology since at least the 1970s, the Respondent does not explain why he suddenly chose to employ a domain name identical to the Complainant’s UNICHIP mark shortly after the Complainant broke off relations with him for distributing the Complainant’s UNICHIP products.
On balance, the record more strongly supports the Complainant’s conclusion that the Domain Name was employed for its trademark significance than it does the Respondent’s contention that the Domain Name was registered and used for its generic meaning. See mVisible Technologies, Inc., supra. Where the Respondent had actual knowledge of the Complainant’s efforts to sell UNICHIP-labeled products into the German market, it does not matter that the Complainant had not established trademark rights in Germany. The point, for purposes of the third element of the Policy, is whether the registration and use of the Domain Name targeted the Complainant’s mark. The Panel finds that it did.
7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.