WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bauglasindustrie GmbH v. Easyspace Privacy / Pietro Guarino, Glass Block Technology
Case No. D2018-0899
1. The Parties
Complainant is Bauglasindustrie GmbH of Schmelz, Germany, represented by Pilkington Group Limited, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”).
Respondent is Easyspace Privacy of Glasgow, United Kingdom / Pietro Guarino, Glass Block Technology of Hyde, United Kingdom, represented by Aticus Law Solicitors, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <reglit.com> (the “Domain Name”) is registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2018, 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 Complainant on April 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, the Center notified Complainant that the Complaint was administratively deficient. In response, Complainant filed an amended Complaint on April 25, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. At Respondent’s request, the due date for Response was extended to May 26, 2018. At Respondent’s request, the due date for Response was subsequently extended to June 5, 2018. The Response was filed with the Center on June 6, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 12, 2018. 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.
On June 14, 2018, the Panel issued Procedural Order No. 1, which stated in relevant part:
“Pursuant to the powers of the Panel granted under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel requests the following information, supported where possible with documentary evidence:
1. Complainant shall explain the relationship among Bauglasindustrie(s) GmbH, Pilkington Group Limited, and NSG, including the respective rights of such entities vis-à-vis any REGLIT trademark.
2. Complainant shall provide evidence of use of the REGLIT mark by Bauglasindustrie(s) GmbH, Pilkington Group Limited, and/or NSG since 1999.
3. Complainant shall explain the contractual relationship between Bauglasindustrie(s) GmbH, Pilkington Group Limited, and/or NSG and Westcrowns Contracting Services Ltd (“Westcrowns”), including any rights granted to Westcrowns to use the REGLIT mark and/or register the Domain Name <reglit.com>.
4. Respondent shall explain (with evidence) its allegation (Response, Section III, paragraph C, i.e., ‘bad faith’ section) its allegation that Glass Block Technology ‘has actively sought to enter into a commercial arrangement for the provision of glass products from the complainant and/or claimant and was in engaged in such discussions before acquisition of Reglit.com (indeed some considerable time before)’.
5. Respondent shall respond to Complainant’s allegation (Amended Complaint, Section VI, paragraph B, i.e., ‘rights or legitimate interests’ section) that ‘Respondent is sourcing its goods from a competitor of the Complainant.’ In this connection, Respondent shall state whether it has sold, or attempted or advertised to sell, any glass products or services from a source other than Complainant.
The Parties’ submissions should be confined to those matters set out above. The Parties are requested to submit the above-mentioned information (and supporting evidence) by June 22, 2018. The Parties shall have until June 29, 2018 to respond to the other Party’s June 22, 2018 submission.”
The Parties timely responded to Procedural Order No. 1. On July 9, 2018, the Panel issued Procedural Order No. 2, which stated in substance:
“Pursuant to the powers of the Panel granted under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel requests the following information, supported where possible with documentary evidence:
1. Complainant shall provide a copy of its contract with Westcrowns (and may redact financial or pricing information) in which Complainant authorized Westcrowns to register and/or use the Domain Name <reglit.com> and/or to use the REGLIT mark in commerce.
2. Complainant shall indicate whether it received a contemporaneous copy of the November 22, 2017 report to creditors submitted by the Administrator for Westcrowns (see paragraph 3 of Respondent’s reply to the Administrative Panel Procedural Order No. 1) or was otherwise aware of paragraph 5.22 of said report to creditors.
3. In the event the answer to question 2 above is Yes, Complainant shall indicate whether it understood paragraph 5.22 of the Administrator’s report to creditors to refer in part to the REGLIT mark or the Domain Name <reglit.com>, and shall otherwise explain why Complainant did not object to the report as suggesting that rights to the Domain Name <reglit.com> and/or the REGLIT mark were the property of Westcrowns.
Complainant shall provide the requested information on or before July 16, 2018. Respondent shall have until July 20, 2018 to reply to Complainant’s submission.”
The Parties timely responded to Procedural Order No. 2.
4. Factual Background
Complainant is a majority owned subsidiary of Pilkington Group, which in turn is a majority owned subsidiary of NSG UK Enterprises Limited. According to Complainant, these entities are all part of the so-called “NSG Group”. In any event, these entities will be referred to collectively as “Complainant” unless the context requires more specificity.
Complainant holds several registered trademarks for REGLIT, including International Trade Mark Registration Number 336680 (registered July 5, 1967), for “profiled building glass and assembly elements thereof,” including building glass panels for the production of glass walls, and United Kingdom Trade Mark Registration Number 936539 (registered January 15, 1969) for glass blocks, glass sheets, and glass plates for use in the production of walls. According to Complainant, its use of the mark REGLIT in respect of glass products “spans more than forty years” and the REGLIT mark has “acquired substantial goodwill and reputation in the architectural sector.”
In October 1999, Complainant engaged a firm called Westcrowns Contracting Services Ltd. (“Westcrowns”) to distribute Complainant’s glass goods in the United Kingdom. Complainant and Westcrowns executed a Distribution Agreement (the “1999 Agreement”), which provided, with respect to Complainant’s trademarks:
“5.1 For and on behalf of the Trade Mark Owner the Manufacturer hereby authorises the Distributor to use the Trade Marks in the Territory on or in relation to the Products for the purposes only of exercising its rights and performing its obligations under this Agreement. In the case of the Reglit trade mark, unless the parties shall agree any different period in writing such authorisation shall apply only for a period of two years from the Commencement Date.”
Complainant asserts that it continued to permit Westcrowns to use the REGLIT mark beyond the initial two-year period noted in the above-quoted paragraph 5.1 of the 1999 Agreement. Complainant did not provide evidence that it gave Westcrowns written authority to do so.
With respect to Complainant’s trademarks, paragraph 5.4 of the 1999 Agreement further provides:
“Except as provided in clause 5.1 the Distributor shall have no rights in respect of any trade names or Trade Marks used by the Manufacturer in relation to the Products or of the goodwill associated therewith, and the Distributor hereby acknowledges that, except as expressly provided in this Agreement, it shall not acquire any rights in respect thereof and that all such rights and goodwill are, and shall remain, vested in the Trade Mark Owner.”
The 1999 Agreement provides that it is terminated upon the occurrence of certain events, one of which is if Westcrowns is put into administration (essentially a form of bankruptcy in the United Kingdom). Upon termination, the 1999 Agreement provides, Westcrowns must cease using Complainant’s marks except in order to sell existing stock.
Complainant alleges that, by virtue of the 1999 Agreement, it authorized Westcrowns to register the Domain Name, which Westcrowns did. From 1999 to late 2017, Westcrowns used the Domain Name for a website to promote the sale of Complainant’s glass products.
In response to Procedural Order No. 2, Respondent – not Complainant – brought to the Panel’s attention an alleged “Supply and Distribution Agreement” between Complainant and Westcrowns, allegedly entered into in March 2009 (the “2009 Agreement”). Respondent annexed a letter from the law firm representing the Westcrowns Administrators (see next paragraph). In that letter, the law firm stated that the 2009 Agreement (which Westcrowns possesses but which was not produced in this proceeding) by its terms replaces the 1999 Agreement. The firm also states that a schedule of trademarks in the 2009 Agreement makes no reference to the REGLIT mark.
Westcrowns went into administration in 2017. On October 20, 2017, three individuals were appointed as Administrators of Westcrowns. In a statement of proposals to creditors dated November 22, 2017, the Administrators noted, in paragraph 5.22 of the report (entitled “Intellectual Property (IP)”):
“The Company [Westcrowns] holds a glass manufacturing patent as well as several website domains, however, no value was ascribed to these assets in the Company’s accounts. As a result, the IP has been omitted from the Administrators’ Estimated Financial Position (EFP) at Appendix B. The Administrators will engage a specialist agent to value the IP and will deal with these assets based on the valuation and disposal advice received.”
In its response to Procedural Order No. 2, Complainant asserts that it did not understand paragraph 5.22 of the report to creditors to refer or apply to its REGLIT mark or to the Domain Name, since the 1999 Agreement both confirms that the REGLIT mark remains the property of Complainant and provides that Westcrowns’ rights to use the mark ceased when Westcrowns went into administration and the 1999 Agreement terminated by its terms.
On or about October 23, 2017, Respondent initiated contact with Complainant’s representative (who used an email address [***]@nsg.com and shall be referred to herein as “CC”), and introduced himself as a professional in the glass business. Over the next three weeks, Respondent described the status of a series of construction projects underway in the United Kingdom which required Complainant’s glass products, which information he purportedly derived via discussions with contractors on the projects. It emerges from the Parties’ email exchanges between October 23, 2017 and November 13, 2017 that Respondent was aware of Westcrowns’ move into administration, and that Respondent was seeking essentially to fill the operational void left by Westcrowns’ cessation of business. From the record submitted by the Parties, it appears that the last email from Complainant’s representative “CC” to Respondent was a brief email on November 2, 2017, in which “CC” told Respondent that he would be available to meet for up to one hour at an industry conference the following week in Paris.
On November 13, 2017, Respondent sent an email to “CC” after the Paris meeting, which appears to have taken place on November 9, 2017. In this email, Respondent described his ongoing efforts to ensure that projects were not disrupted by Westcrowns’ entry into administration, and noted that he had been in contact with the Administrators about various projects.
Meanwhile, on October 26, 2017, Respondent registered the company name Reglit Limited with the Companies House (UK). On November 10, 2017, a representative of NSG Group’s intellectual property division wrote to Respondent, objecting to Respondent’s registration of Reglit Limited as a company name. In this letter, Complainant’s parent cited Complainant’s registered REGLIT trademarks and demanded that Respondent withdraw the company name registration. Respondent did not reply to this letter.
On December 20, 2017, Complainant filed a challenge to Respondent’s name registration with the Company Names Tribunal (UK). On January 31, 2018, Respondent’s company name was voluntarily changed from Reglit Limited to Rosso Dotto Construction Limited.
On February 23, 2018, Respondent acquired the Domain Name. It appears that the Administrators sold, or authorized the sale of, the Domain Name (as well as another domain name, <reglit.co.uk>, not at issue in this proceeding) to Respondent for GBP 9,600.
After Respondent’s acquisition of the Domain Name, it resolved to a website offering “profiled channel glass”. The website stated, at least as of April 20, 2018: “Reglit.com has been acquired and relaunched to maintain continued service to the industry for the design, supply and installation of U profiled channel glass.” The website bears Complainant’s stylized “REGLIT” logo.
On March 21, 2018, Complainant’s IP representative sent a cease-and-desist letter to Respondent in connection with the Domain Name and the corresponding website. On April 6, 2018, Respondent’s legal representative stated that there would be a response to the March 21, 2018 letter within seven days. No such letter appears to have been sent. This Complaint followed on April 23, 2018.
5. Parties’ Contentions
A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. Complainant’s essential contention is that Respondent tried to move in and replace Westcrowns as Complainant’s UK distributor upon the administration of Westcrowns, and that, when that effort failed, Respondent opportunistically acquired the Domain Name in order to pass itself off as Complainant’s distributor and expand its own business in the UK.
B. Respondent
Respondent disputes Complainant’s contentions. In essence, Respondent asserts that it paid fair value for the Domain Name in an arm’s-length transaction with the Administrators of Westcrowns, who obviously believed that they had every right to dispose of the Domain Name through sale. Respondent also argues that Complainant does not have trademark rights in the REGLIT mark, as that mark had been used by Westcrowns – not Complainant – for 18 years prior to Respondent’s acquisition of the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant, in all its group forms, holds relevant trademark rights, and the Domain Name is identical to such marks. The first element of the Policy is made out.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
In view of the Panel’s decision on the “bad faith” element below, the Panel need not decide this issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel notes at the outset, for the benefit of those intending to pursue a case under the Policy, that Complainant asserted in its Complaint that “Respondent’s lack of rights or legitimate interest in the use of the Domain Name renders the issue of a bad faith acquisition unnecessary to be considered.” That statement is incorrect. The Panel notes moreover that Complainant did in fact present arguments as to bad faith, so the purpose of this statement can perhaps best be understood as some form of “logical” confidence in Complainant’s case. Lest there be any doubt, after tens of thousands of published decisions under the Policy since 1999, it has been uniformly held that it is incumbent upon the complainant in each case to establish all three elements of the Policy; establishing a lack of rights or legitimate interests does not obviate the need to establish bad faith registration and use.
On the merits of the “bad faith” issue, the Panel cannot conclude from this record – despite the issuance of two Procedural Orders seeking clarity on this complex case – that Complainant has carried its burden of proving it more likely than not that Respondent registered and used the Domain Name in bad faith. The Panel has a suspicion that Respondent may have opportunistically acquired the Domain Name in the immediate aftermath of Westcrowns going into administration, and perhaps in a court of law Complainant could make out a successful case of unfair competition or otherwise proceed against Respondent.
For purposes of this proceeding, however, there are simply too many questions and holes in the story to find that Complainant has made out its case. The exact relationship between Complainant and Westcrowns, both in 1999 and then over the years, is not altogether clear. This is information that should be within Complainant’s knowledge, and which should have been laid out in detail. The 1999 Agreement was not even mentioned until after the Panel issued Procedural Order No. 1, and the 2009 Agreement was not mentioned by Complainant at all, even though, according to the Administrators’ counsel, the 2009 Agreement was the governing agreement at the time Westcrowns went into administration and the Domain Name was sold. Nor does Complainant provide evidence that Westcrowns had written permission (as required by the 1999 Agreement) from Complainant to continue to use the REGLIT mark after 2001. In short, although it appears that Complainant still holds a valid trademark registration for the REGLIT mark, the details regarding Complainant’s actual use of the mark – directly or through Westcrowns – is murky. Moreover, Complainant was aware that Westcrowns went into administration. One would have expected Complainant to take immediate steps to ensure that any trademark rights that may have been affected by a distributor’s entry into insolvency proceedings are adequately protected. Complainant’s explanation in this regard does not in the Panel’s view seem altogether complete, especially as a specialist agent was to be appointed to deal with assets such as Westcrowns’ registration of the Domain Name.
Under the circumstances, which include Complainant’s failure to include all the necessary or relevant information about the contracts with Westcrowns, the Panel is unable to conclude that Respondent’s purchase of the Domain Name from the Westcrowns estate was done in bad faith.
The Complaint fails.
7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: July 24, 2018
