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Hesco Bastion Limited v. Hercules Engineering Solutions Consortium
(HESCO) Barriers FZE
Case No. D2004-0940
1. The Parties
The Complainant is Hesco Bastion Limited, Cross Green Industrial Estate, Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland. It was originally represented by Charles Russell, Solicitors, United Kingdom of Great Britain and Northern Ireland. By e-mail of January 20, 2005, Mr. Bamford, Withers LLP, United Kingdom of Great Britain took over the representation of Complainant.
The Respondent is Hercules Engineering Solutions Consortium (HESCO) Barriers
FZE, of Jebel Ali, Dubai, United Arab Emirates, of United Arab Emirates, represented
by Clyde & Co., United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <hescobarriers.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2004. On November 10, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 10, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2004. The Response was filed with the Center on December 16, 2004.
The Center appointed Gьnter Pickrahn as the sole panelist in this matter on January 10, 2005. 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.
By e-mail of December 29, 2004, Complainant advised
that it would like to submit further evidence in return to the Response. Complainant
requested that the Panel be not convened until it has had the chance to submit
this additional material. By e-mail of January 5, 2005, Respondent opposed to
Complainant’s request by referring to paragraph 12 and 10(d) of the Rules
pursuant to which it is within the sole discretion of the Panel to request further
statements or documents. By e-mail of January 20, 2005, Complainant repeated
its wish to submit further evidence relating to the proceedings in the United
Kingdom which proceedings allegedly prove that Respondent was involved in the
supply of counterfeit gabions under the name HESCO. Again, by e-mail of January 24, 2005,
Respondent objected against any further submission by Complainant.
4. Factual Background
The Complainant is a company incorporated in England and Wales whose principal place of business is United Kingdom. It designs, constructs and markets fortifications, called gabions. Gabions are collapsible cage like structures, made from wire mesh, which can be easily stored, transported and erected. Its most notable use is to build protective blast walls.
Complainant holds a community trademark for the word HESCO BASTION (No. 002956878) in classes 6 and 19 for, inter alia, “wire containers” and “barrier or defence walls”. This community trademark has a registration date of October 27, 2004.
Respondent is seated in Dubai. Its principal activity
is the supply of force protection and security systems for military, peace keeping,
humanitarian and civilian operations. Besides products such as bullet proof
vests, surveillance and security systems and others, it also sells gabions under
the name “HESCO BARRIERS Blast Wall Plus” and “HESCO BARRIERS
Parameter Plus”. It holds a trademark registration for the word mark “HESCO
BARRIERS” in class 6 in the United Arab Emirates which trademark was registered
on June 29, 2004, under registration No. 47411.
5. Parties’ Contentions
Complainant claims that it has established itself as one of the market leaders for gabions with worldwide sales since the beginning of 1998 of more than US $100 million. It holds a UK patent relating to gabions, applied for in 1990 and granted in November 1995, which patent has been successfully enforced against infringers in the United Kingdom.
Complainant opines that the domain name used by Respondent is confusingly similar to the HESCO mark. In supporting this opinion, Complainant submits that it has been trading under the trademark HESCO in relation to the sale of its barrier products and, thus, acquired substantial goodwill attaching to this mark. No other company traded as HESCO BASTION and no one traded as HESCO for Complainant’s type of products, i.e. gabions.
Complainant believes that Respondent has no rights or legitimate interests in the registration of the domain name <hesco barriers.com>. Respondent’s name was apparently devised in order to contrive a justification for using the acronym H.E.S.C.O. The mark HESCO is not a genuine term and therefore used by Respondent without a legitimate interest or right.
Further, according to Complainant, Respondent registered the domain name in bad faith. It submits that the registration of the domain name by Respondent was an instrument of fraud to make customers believe that Respondent’s products are genuine products of Complainant or that Respondent is otherwise connected to Complainant. As a further proof of Respondent’s bad faith, Complainant makes reference to a claim before the High Court of Justice in England and Wales against a third party who allegedly admitted acts of passing off. Complainant alleges that Respondent is a joint venture between this third party and a Dubai company. Finally, it is Complainant’s submission that the Respondent destroys the identity and business of Complainant by using the domain name and thus deliberately misleading Internet users.
Respondent points out that, apart from the community trademark for HESCO BASTION, Complainant holds no trademark registration for the word HESCO or any registration for HESCO BASTION outside the European Union. It disputes that Complainant acquired any goodwill in either the mark “HESCO BASTION” or the mark “HESCO” itself. As regards the word HESCO, Respondent makes reference to a search through “google” according to which there are some 37,400 web-pages featuring the word “HESCO”. On the other hand, Respondent claims that it has been trading since May 2003 under the name HESCO BARRIERS and that it used HESCO as part of its trade name. It sold a whole range of products, not only gabions, in numerous countries around the world outside the European Union and, thus, acquired substantial goodwill at least in the United Arab Emirates and elsewhere in the Middle East and Africa. In view of these facts, Respondent argues that its domain name <hesco-barriers.com> is not confusingly similar.
According to Respondent, it also has a legitimate right to use the HESCO trademark. HESCO, a legitimate and bona fide acronym for Hercules Engineering Solutions Consortium, is used by Respondent to identify its goods and services in the territories where it trades. Since it holds a valid trademark for HESCO BARRIERS which predates the Complainant’s community trademark registration, Respondent relies also on this trademark registration to justify its use of its domain name.
Respondent finally denies that it has registered and used the domain name in bad faith since it uses the domain name to offer and sell genuine products manufactured by Respondent. It stresses that none of the circumstances described in paragraph 4(b) of the Policy is given. Respondent particularly denies that it is a joint venture between the Dubai Company and the UK third party. Since it was not a party to any proceedings against the UK third party in the United Kingdom, any implication that Respondent was involved in any wrongdoing by the UK third party is unjustified.
Since Complainant knew or should have known the legitimacy
of Respondent’s use of a domain name, Respondent requests that the Panel
make a finding of Reverse Domain Name Hijacking pursuant to paragraph 15(e)
of the Rules.
6. Discussion and Findings
Pursuant to paragraph 10(c) of the Rules the Panel shall ensure that the administrative proceeding takes place with due expedition. It is therefore the Panel’s opinion that it may extend the time to allow further submissions resulting in a delay of the administrative proceeding only if otherwise the parties’ rights to have a fair opportunity to present their case would be jeopardized. Complainant’s request to have another possibility to submit evidence would delay the decision making process in this administrative proceeding. The Panel therefore dismisses Complainant’s request. It is the Panel’s view that the additional facts and pieces of evidence to which Complainant made reference to (in particular the action before the High Court in the United Kingdom) would have no or very little relevance for the Panel’s decision.
Under the Policy paragraph 4(a), the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the 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
The Complainant based its Complaint both on trademark rights in the word “HESCO BASTION” and in the word “HESCO”. As regards Complainant’s claim to have trademark rights for the word HESCO, the Panel holds that Complainant has failed to prove its allegation. Complainant does not rely on any trademark registration for the word HESCO. While it is true that a Complaint under the Policy and Rules does not require a registered trademark but can be based also on trademark rights acquired by use, Complainant failed to submit any facts supporting its allegation that it acquired trademark rights in the brand HESCO. Respondent correctly noted that Complainant did not submit any facts or evidence proving that Complainant attached the word HESCO to its gabions. On the contrary, the Panel noted from Complainant’s own website that it markets its gabions under the brand name CONCERTAINER®. The Complainant holds a registration for the trademark “HESCO BASTION”, i.e. the community trademark No. 002956878. It is clear and requires no further explanation that the domain name and the trademark “HESCO BASTION” are not identical. There are also significant phonetical differences between the domain name and the mark HESCO BASTION. The same applies to the spelling. This fact is of particular importance since domain names are primarily used by typing the domain name address into the computer.
Since the Complainant must prove each of the three elements of the Policy, but fails under the second and third prong (see below), it is not necessary for the Panel to conclude under this element.
B. Rights or Legitimate Interests
Respondent acquired trademark rights in the United Arab Emirates which trademark
rights are older than the trademark rights of Complainant deriving from the
community trademark registration. Further, before any notice to Respondent of
the dispute and before the registration of Complainant’s community trademark,
Respondent used the domain name in connection with its offering of its goods
and services. Respondent acts under the trade name Hercules Engineering Solutions
Consortium, the acronym of which is HESCO. Absent any clear evidence that Complainant
acquired better trademark rights in the United Arab Emirates, there is no basis
for finding that Respondent’s use of the domain name was not bona fide.
The Panel has of course considered Complainant’s allegation that it acquired
substantial goodwill to its products traded under the name HESCO CONCERTAINER
and HESCO BASTION CONCERTAINER. The Panel also noted that this product is protected
in the United Kingdom by a valid patent. However, it is not the task of a Panel
to solve all infringement cases. The administrative proceeding is restricted
to clear willful infringements. Other IP right violations, if any, must be solved
by the national courts (see Alitalia-Linee Aeree Italiane S.p.A. vs. Colour
Digital, WIPO Case No. D2000-1260).
Based on the above, the Panel concludes that the Complainant has not met the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel also considered whether the domain name has been registered and used
by Respondent in bad faith. There is no indication that Respondent acquired
the domain name with the intention to sell it. There is no pattern of conduct
described in paragraph 4b (ii) of the Policy which pattern is required for a
finding of such circumstance (see Tetra Laval Holdings & Finance S.A.
vs. Elaine Bell, WIPO Case No. D2000-1708).
For the reasons stated under 6B above, the Panel cannot find that the circumstances
described in paragraph 4b (iii) and (iv) of the Policy or any other circumstances
justifying the finding of a bad faith registration are given.
D. Reverse Domain Name Hijacking
It has been frequently held that a finding of Reverse
Domain Name Hijacking is only justified when Complainant knows of the legitimate
interests and rights of the Respondent. There is no evidence for such knowledge
of Complainant. Based on the facts submitted by both parties, the Panel does
not think it would be appropriate to describe Complainant’s action as
a clear abuse of the administrative proceeding. Therefore, the Panel rejects
Respondent’s request to make such a finding.
For all the foregoing reasons, the Complaint is denied.