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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patrick Pawlicki v. The Plastiform Company

Case No. D2007-1206

1. The Parties

Complainant is Patrick Pawlicki, Santa Ysabel, California, United States of America. Complainant Patrick Pawlicki is the president of Green Plastics, Ltd., a Nevada corporation (“Green Plastics”). Complainant is represented by Mandour & Associates, United States of America.

Respondent is The Plastiform Company, Renton, Washington, United States of America, represented by David L Tingey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <plastiform.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2007. On August 16, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On August 16, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2007. The Response was filed with the Center on September 8, 2007.

The Center appointed Dana Haviland as the sole panelist in this matter on September 18, 2007. 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 September 21, 2007, Complainant submitted a Reply Brief as a supplemental filing, which included additional documentary exhibits, and on September 22, Respondent submitted a Surreply as a supplemental filing.

After an initial review of the supplemental filings of the parties, the Panel accepted them on October 2, 2007, and the anticipated decision date for the administrative decision was extended to October 16, 2007.

4. Factual Background

Complainant is the inventor of certain products used in construction, described herein by Complainant as “plastic boards for flatwork forming”, which are covered by United States Patent No. 5,015,117, issued before all other relevant events herein (the “Patent”), and which were later the subject of a patent license agreement between Complainant and Respondent (the “Licensed Products”).

Complainant claims trademark rights in the word PLASTIFORM (the “PLASTIFORM Mark”) and contends that the date of first use of the PLASTIFORM mark by himself and an unidentified predecessor in interest, was in connection with, but not limited to, plastic boards for flatwork forming, and was at least as early as January 24, 1987, the date recited in Complainant’s subsequent 2005 California trademark registration (the “California Registration”). (Complaint, Annex 3).

Respondent also claims rights in the PLASTIFORM Mark and alleges that as early as 1991, Respondent’s president, Mr. Michael Lane, then doing business as Rola Industries, Inc., sold Complainant’s Licensed Products using the PLASTIFORM Mark in California and nationally.

Complainant agrees that, at least as early as January 1994, Respondent and Complainant entered into a business relationship whereby Respondent became a licensee of the rights to manufacture and sell Complainant’s patented construction materials, the Licensed Products. According to the Complaint, the license agreement between Complainant and Respondent was solely for the patented invention and did not give Respondent any license, permission or other rights by which Respondent could use any trademark of Complainant. (Neither party has submitted a copy of any written patent license agreement between the parties for a period prior to the year 2000).

On April 25, 1994, Rola Industries, Inc. sent Respondent shipping instructions for an order of forms and clamps to third party companies in Nevada, in a document headed “Plastiform TM Shipping Instructions”, and signed by Michael Lane. (Complainant’s Reply Brief, Annex 2). Complainant argues that this document evidences Respondent’s knowledge of Complainant’s rights to the PLASTIFORM Mark. Respondent argues that the document evidences Respondent’s use of the PLASTIFORM Mark on its own behalf.

Respondent, The Plastiform Company, is a Washington corporation, incorporated on November 28, 1994. (Response, Exhibit 1). Respondent’s corporate name incorporates the contested PLASTIFORM Mark in its entirety.

Respondent registered the Domain Name <plastiform.com> on May 11, 1996. (Complaint, Annex 1; Response, Exhibit 8). The Domain Name incorporates the contested PLASTIFORM Mark in its entirety. Complainant alleges that the domain name registration was without Complainant’s consent.

In January 1999, Respondent participated as an exhibitor in the World of Concrete trade show and used the PLASTIFORM Mark in its advertisement in the trade show brochure in various ways - in its corporate name The Plastiform Company; in reference to its Domain Name website at “www.plastiform.com”; and in the text describing its products as “Plastiform TM forms”. (Response, Exhibit 5, which includes copies of the World of Concrete annual January trade show brochures listing exhibitors with brief advertisements for their products, for the years 1999, 2001, 2002, 2003, 2005, 2006 and 2007, but not for the years 2000 and 2004).

On January 28, 2000, Complainant and Respondent entered into an Exclusive Invention License Agreement (the “Patent License Agreement” or “Agreement”), wherein Complainant granted Respondent an exclusive license “to manufacture, have manufactured, and sell Construction Materials with End Connectors (‘Licensed Products’) covered by [the Patent] (or any claim thereof or improvement thereon) issued to and owned by [Complainant] (hereinafter the ‘Licensed Intellectual Property’)”, in exchange for substantial royalties. (Response, Exhibit 3). The Agreement recites that the Licensee is The Plastiform Company, a Washington corporation. (Response, Exhibit 3).

The Patent License Agreement is silent with respect to the ownership, license or other disposition of any trademark rights of either Complainant or Respondent in the contested PLASTIFORM Mark or any other trademark, either as a component of the “Licensed Intellectual Property” under the Agreement or as an issue to be dealt with upon termination of the Agreement. (Response, Exhibit 3). In contrast, the Agreement makes extensive provision for the parties’ respective rights to not just the licensed patent rights but other assets as well. (For example, the Agreement provided for Complainant/Licensor’s continuing ownership of existing or new molds and tooling used in manufacturing the Licensed Products throughout the term of the Agreement and after any termination of the Agreement, and it further provided for Complainant and Respondent’s respective rights with respect to sale or destruction of any Licensed Products remaining unsold after the termination of the Agreement). (Response, Exhibit 3). The Agreement does not contain a non-competition clause.

The term of the Patent License Agreement was three years, subject to automatic renewal each year thereafter, unless Respondent breached the Agreement or abandoned exploitation of the Licensed Intellectual Property by failing for a period of six months to sell Licensed Products. (Response, Exhibit 3). The parties agreed that any dispute arising under the Agreement would be subject to arbitration in California under the rules of the American Arbitration Association. (Id.)

During the term of the Patent License Agreement, Respondent paid royalties to Complainant using checks in the name of The Plastiform Company, which were endorsed by Complainant. (Response, Exhibit 4, copies of four royalty checks with various dates in May and July 2000).

In 2001 and subsequent years to date, Respondent continued to participate as an exhibitor in World of Concrete trade shows and to use the PLASTIFORM Mark in its trade show brochure advertisements, listing its corporate name The Plastiform Company , its Domain Name website at “www.plastiform.com”, and sometimes (but not always) describing its products as “Plastiform TM forms”. (Response, Exhibit 5)

In March and December 2001, and again in May 2002, Complainant sent Respondent notices of breach of the Patent License Agreement, complaining that Respondent was buying and selling “copies of my patented product, PlastiForm, from a German manufacturer and selling them under the PlastiForm name” and giving notice that if Respondent did not “cease and desist the selling of this inferior product under the PlastiForm name”, the Agreement would be terminated. (Complainant’s Reply Brief, Annex 1).

On July 11, 2002, Complainant sent Respondent a notice of termination of the Patent License Agreement purportedly effective August 10, 2002 for failure to cure the breaches set forth in Complainant’s prior letters. (Complainant’s Reply Brief, Annex 1). However, the parties apparently agree that the Agreement remained in effect at least through 2004, and a later notice of termination from Complainant’s attorney states that the Agreement terminated in November 2005. (Id.)

From 2003 through 2005, Complainant apparently also participated as an exhibitor at the World of Concrete trade shows using the name Plastiform Manufacturing, with Respondent’s Santa Ysabel, California address, and describing its exhibited products as “Plastic Flatwork, Curb, Gutter, and Pool Deck forms for decorative mosaic concrete surfaces”. (Response, Exhibit 5).

On January 19, 2005, Complainant’s attorney sent Respondent a letter complaining of patent infringement and demanding that The Plastiform Company “cease and desist from manufacturing, using, offering for sale, or selling the Plastiform flatwork forming system or any similar product within the United States”. (Complainant’s Reply Brief, Annex 1).

On February 7, 2005, Complainant filed for incorporation of his company Green Plastics, Ltd., in Nevada. (Response, Exhibit 2).

On March 10, 2005, Complainant registered the PLASTIFORM Mark with the state of California, California Trademark Registration No. 110758, for use in connection with “hollow extruded plastic boards for flatwork forming; dimensionally equal to standard lumber sizes and other custom sizes using the same production methods to produce the product” (the “California Registration”). (Complaint, Annex 3).

On July 27, 2005, Complainant’s attorney sent Respondent a notice of breach of the Patent License Agreement, stating that Respondent had violated the Agreement “by arranging for the manufacture and importation of products that infringe upon Mr. Pawlicki’s patent, United States Patent Number 5,015,117”. (Complainant’s Reply Brief, Annex 1). On August 29, 2005, Complainant’s attorney sent Respondent a notice of breach of the Patent License Agreement on the same grounds as set forth in Complainant’s 2001 and 2002 notices of breach. (Complainant’s Reply Brief, Annex 1).

On October 17, 2005, Complainant’s attorney sent Respondent a notice of termination of the Patent License Agreement in 30 days for failure to cure the various alleged breaches of the Agreement, and added:

“Accordingly, you are hereby ordered to withdraw from the up and coming World of Concrete 2006 trade show to be held January 17-20, 2006 in Las Vegas. Furthermore, you are hereby ordered to cease and desist the marketing and sale of Plastiform products through your website ‘www.plastiform.com’”.

(Complainant’s Reply Brief, Annex 1).

On November 29, 2005, Complainant’s attorney sent Respondent a notice that the Patent License Agreement had terminated on November 16, 2005, and advising Respondent that

“You are hereby ordered to cease the manufacture and/or importation of products that infringe upon Mr. Pawlicki’s intellectual property, including without limitation products manufactured by Extrusion Technologies in Lakewood, WA and ETC in West Germany. As you are no longer licensed to manufacture or sell Plastiform products, any products that are manufactured by you without Mr. Pawlicki’s express permission will be treated as patent infringement….

Additionally…you are to ‘make no further use of any and all of LICENSOR’s rights’ conferred by the License Agreement. Accordingly, you are to cease the advertisement of Plastiform products in any medium without delay. This includes the immediate removal of Plastiform products from your website ‘www.plastiform.com’. You are further prohibited from representing Plastiform products in trade shows such as the upcoming World of Concrete 2006 trade show to be held January 17-20, 2006 in Las Vegas.”

In January 2006 and in January 2007, Respondent continued to participate as an exhibitor in the World of Concrete trade shows and continued to use the PLASTIFORM Mark in the trade show brochures as before - in its corporate name The Plastiform Company; in reference to its Domain Name website at “www.plastiform.com”; and in the text describing its products as “Plastiform TM forms” (Response, Exhibit 5).

In January 2006, Complainant’s Plastiform Manufacturing advertisement in the World of Concrete trade show brochure used the Plastiform Mark in the business name, in a new reference to a website at “www.plastiform.net” and in the text with reference to its products: “PlastiForm manufacturing is the sole producer of all plastiform products and the original patent holder….PlastiForm is guaranteed for 7 years.” (Response, Exhibit 5).

Complainant’s January 2007 World of Concrete exhibition listing refers to another website at “www.plastiformconcreteforms.com” and states that “PlastiForm/Green Plastics is the sole producer of all authentic Plastiform products and the original patent holder”). (Response, Exhibit 5.)

On August 2, 2007, two weeks before the commencement of this UDRP proceeding, Complainant’s attorney sent Respondent a letter demanding that Respondent cease and desist from use of the PLASTIFORM Mark and the Domain Name, requesting transfer of the Domain Name, and for the first time, alleging trademark infringement, as well as claims for false designation of origin, false advertisement and unfair competition. (Complaint, Annex 4).

Respondent continues to use the Domain Name, the corporate name The Plastiform Company, and the PLASTIFORM Mark to manufacture and sell goods which are in direct competition with Complainant’s patented products. Respondent’s current Domain Name website displays the PLASTIFORM Mark in the corporate name The Plastiform Company, in Respondent’s email address, and in a customer quote “We’ve used our Plastiform TM forms over 500 times”. (Response, Exhibit 6). Respondent asserts that it no longer manufactures and sells the Licensed Products but agrees that it sells “closely competing products similar to those of Complainant, but that do not fall within Complainant’s patent claims while still falling within the class of goods described in Complainant’s California trademark registration”.

Complainant’s current website page at “www.plastiform.net” uses the term PlastiForm TM to refer to its plastic concrete forms and states “We hold the original PlastiForm patent. Look for the patent right on the boards to be sure you’re getting the real thing”. Another page describes Complainant as “the original manufacturer and patent holder” and states “The only difficulty we have encountered with plastic forms is with copycat products made with inferior materials. We suggest you note the accountability of all plastic forms by a marked patent on the product as well as a guarantee”. (Response, Exhibit 7).

5. Parties’ Contentions

A. Complainant

The Complaint

Complainant contends that it is the owner of California Trademark Registration No. 110758 for PLASTIFORM, registered for use in connection with “hollow extruded plastic boards for flatwork forming; dimensionally equal to standard lumber sizes and other custom sizes using the same production methods to produce the product”. (Complaint, Annex 3).

According to the Complaint, Complainant and its predecessor in interest have been using the PLASTIFORM trademark in connection with, but not limited to, plastic boards for flatwork forming since at least as early as January 24, 1987.

The Complaint states that, at least as early as January 1994, Respondent and Complainant entered into a business relationship where Respondent became a licensee of Complainant’s patented construction materials. According to the Complaint, the agreement between Complainant and Respondent was solely for the patented invention and in no way gave Respondent any license, permission or other rights by which Respondent could use any trademark of Complainant.

Complainant contends that, with no consent from Complainant, Respondent registered the <plastiform.com> domain name on May 11, 1996 comprised entirely of Complainant's PLASTIFORM mark.

The Complaint states that the contractual relationship between Complainant and Respondent concerning the patented invention ended in 2004.

Complainant alleges that despite numerous requests to cease, Respondent has continued to use the <plastiform.com> domain name to sell its competing products. The most recent request to cease was in a letter dated August 2, 2007 to which no response was received. (Complaint, Annex 4).

Identical or confusingly similar

Complainant contends that Respondent’s domain name <plastiform.com> is identical to Complainant’s trademark PLASTIFORM, as the suffix “.com” does not distinguish the domain name at issue from Complainant’s mark.

Rights or legitimate interests

Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because Respondent is not using the domain name to sell the trademarked goods, but is offering its own competing goods. Complainant argues that Respondent is thus making commercial use of the domain name for commercial gain to misleadingly divert consumers, which is not a legitimate use. On the contrary, the Complaint alleges, the use of the domain name comprised entirely of Complainant’s trademark to attract potential consumers to Respondent’s website, coupled with the offering of competitive products on that site is a “classic bait and switch” that evidences a lack or rights or legitimate interests.

Complainant further contends that Respondent has not been commonly known by the domain name, except to the extent due to Respondent’s own bad faith and illegitimate goods, and that Respondent has registered the Domain Name to prevent Complainant from obtaining the “.com” domain, the most sought after top level domain for a commercial business like Complainant’s.

Registered and used in bad faith

Complainant contends that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, which evidences registration in bad faith under Paragraph 4(b)(iii) of the Policy. According to Complainant, the fact that Respondent had a business relationship with Complainant well before its registration of the Domain name, and the fact that the Domain Name is identical to the distinctive trademark of Complainant, show that the PLASTIFORM Mark was known to Respondent when registering the Domain Name. Since Respondent has no rights or legitimate interest in the Domain Name, Complainant argues, its registration of the Domain Name with actual knowledge of an existing trademark is evidence of bad faith.

Further, the Complaint alleges, Respondent has used the Domain Name to market and sell products which are in direct competition with Complainant’s products, and thus Respondent, in both the registration and use of the Domain Name, has intentionally attempted to disrupt the business of Complainant and profit from Complainant’s PLASTIFORM mark.

Complainant further contends that Respondent’s use of the Domain Name is intended to attract Internet users to an online location for commercial gain, by creating a likelihood of confusion with Complainant’s Mark. According to Complainant, in knowingly selling competing products using a domain name and website bearing Complainant’s registered trademark, Respondent is deliberately causing confusion among consumers. Such use is also evidence of bad faith under Paragraph 4(b)(iv) of the Policy.

Finally, Complainant alleges that Respondent has failed to respond to Complainant’s August 2, 2007 request to transfer the domain name, and that such failure to respond to a request to transfer has been held to be evidence of bad faith.

Complainant requests that the Domain Name be transferred to Complainant.

Complainant’s Reply Brief

Complainant’s Reply Brief contends that Respondent’s allegations that the Complainant never objected to Respondent’s use of the PLASTIFORM Mark are knowingly false and designed to mislead the Panel. Complainant contends that he has objected to Respondent’s use of the PLASTIFORM Mark on numerous occasions, and submits copies of various letters from Complainant and his attorney to Respondent with respect to the alleged breach and termination of the Patent License Agreement and Respondent’s sale of products that allegedly infringe Complainant’s patent.

(Complainant’s Reply Brief, Annex 1).

Complainant further contends that its California trademark registration is prima facie evidence of its use of the PLASTIFORM Mark since at least as early as January 24, 1987, the date indicated on the Registration.

Finally, Complainant alleges that when Respondent was selling Complainant’s products as Rola Industries, Inc., in 1994, Respondent knew that the PLASTIFORM Mark belonged to Complainant and submits a copy of a 1994 document from Rola Industries, Inc. providing shipping instructions for an order of Complainant’s products headed “Plastiform TM Shipping Instructions”. Complainant contends that “Respondent’s use of the symbol “tm” after the term PLASTIFORM serves as evidence that Respondent was aware of Complainant’s trademark rights in the mark at the time”.

B. Respondent

The Response

Respondent submitted a Response to the allegations of the Complaint.

Identical or confusingly similar

Respondent agrees that the Domain Name, less the “.com” suffix, is identical to the PLASTIFORM Mark in which Complainant claims rights, but contends that Complainant has no rights in the PLASTIFORM Mark, because Complainant granted Respondent the exclusive right to manufacture and sell Complainant’s patented product in 1991, and Respondent has been selling that product under the PLASTIFORM trademark with Complainant’s knowledge and consent since 1991. According to Respondent, until recently, Complainant was content to license the patent to Respondent to manufacture and sell the product and receive royalties from the patent license and not market his product himself, and therefore it has been Respondent and not Complainant that has been developing good will in the mark and gaining recognition by commercial use of the mark for the better part of two decades. Thus, Respondent argues, through this actual use of the mark nationally, Respondent has become commonly known to the purchasing public by the mark PLASTIFORM and is the proper owner of the mark and not Complainant.

Respondent further argues that it has been using the Domain Name <plastiform.com> with full knowledge of and without objection by Complainant since its registration on May 11, 1996. Respondent argues that Complainant’s claim is barred by the doctrine of laches for failure to timely prosecute the claim for twelve years, because it was only after the contractual relationship between the parties ended in 2004 that Complainant attempted to gain control of the PLASTIFORM Mark, and even then Complainant still failed to object to Respondent’s use of the Mark until August 2, 2007, three and a half years later.

According to Respondent, Complainant obtained a patent on his design for plastic concrete forms in the 1980’s. He did not manufacture or sell his product but licensed manufacture and sale of the product to Respondent. Respondent began selling the product under the mark PLASTIFORM in California in 1991, doing business as Rola Industries, Inc. In 1992 Respondent moved to Washington and continued to do business in California and worldwide from Washington. In Washington, Respondent incorporated his business under the corporate name The Plastiform Company in 1994. (Response, Exhibit 1).

Respondent notes that Complainant Pawlicki’s corporation, Green Plastics, Ltd., was organized as a corporation on February 7, 2005, several years after Respondent’s prior use of the Mark, which Respondent asserts began in 1991 when Respondent obtained a license from Complainant to sell Complainant’s patented product. Response, Exhibit 7. Respondent argues that Complainant’s use of the Mark under his present company could not have existed prior to its organization in 2005, a date consistent with the date of Complainant’s California trademark registration that year. Respondent contends that it is thus apparent that it was in 2005 that Complainant began or at least intended to begin marketing his product himself, which Respondent claims is also consistent with Respondent’s personal knowledge.

Respondent argues that although Complainant claims benefit of a 2005 trademark registration in which he claims first use on or before January 24, 1987, he offers no evidence in support of his assertion of use as early as 1987. According to Respondent, the only evidence of use produced by Complainant shows that he did not use or intend to use the Mark until 2005 - the date of his California trademark application, long after Respondent’s prior use and nine years after Respondent registered his Domain Name, which Respondent asserts he has been using in good faith for commercial purposes ever since its registration.

According to Respondent, Complainant’s California Registration is effective only in California and has no effect outside of California. California does not check for registrations or other use outside of California, and if they had, they would have discovered Respondent’s prior use. Respondent notes that Complainant has not asserted rights to use of the Mark outside of California. Although Complainant has cited a predecessor in interest in the Mark, he has not named such a predecessor in interest or provided any corroboration that might support his assertion. Respondent alleges that Complainant did not use the Mark as asserted in the Complaint and in the California application for registration, and thus the California registration was fraudulently obtained and not a valid reference in this proceeding. Because Respondent has been selling products under the Mark nationally and internationally since 1991, including in California, Respondent is the proper owner of the Mark nationally and internationally. Complainant’s claim in this proceeding constitutes reverse domain name hijacking.

Rights or legitimate interests

Respondent submits that Exhibit 3 to the Response establishes that Respondent has had a legitimate commercial interest in the Mark. The exhibit shows that the product license, termed Exclusive Invention License Agreement, was renewed in 2000 between Mr. Pawlicki and The Plastiform Company, the identical parties to this UDRP proceeding. The contract provided to Respondent an exclusive right to sell Complainant’s patented product for another three years with a following year to year renewable provision. Hence Respondent argues, the contract also precluded Complainant from selling the product sold by Respondent under the mark PLASTIFORM. Complainant cannot now be heard to complain of Respondent’s use of the name “plastiform” when Complainant contracted with Respondent under Respondent’s business name “plastiform” in 2000.

Exhibit 4 to the Response shows two examples of payments by check made to Mr. Pawlicki by The Plastiform Company in 2000 that Respondent asserts confirm that Mr. Pawlicki was aware that Respondent was commonly known by the Mark and was commercially doing business under the Mark.

Respondent states that Exhibit 5 to the Response is a collection of advertisements between 1994 and 2007 that show Respondent maintaining a continual advertising presence in the purchasing community of concrete forms.

Respondent contends that it has been using the Domain Name in connection with a bona fide offering of goods and services for many years before notice of the dispute, within the meaning of Paragraph 4(c) of the Policy. According to Respondent, between 1991 and 2004, for over 14 years, Respondent sold Complainant’s product under license from Complainant. Since 2004, when Respondent alleges the contractual relationship ended between the parties, Respondent has continued to sell closely competing products similar to those of Complainant, but that do not fall within Complainant’s patent claims while still falling within the class of goods described in Complainant’s California trademark registration.

Respondent asserts that it is the actual trademark owner, not Complainant, even in California, notwithstanding the California registration of the Mark, and undisputedly outside of California. Respondent denies that it has made any untruthful representation on its website and submits all pages of Respondent’s website as Exhibit 6 to the Response. Respondent does not falsely claim ownership, but would be the owner of the mark if a claim of ownership were made.

Respondent denies that it has registered the Domain Name to deprive the trademark owner of reflecting its own mark in a domain name, as it owns only the Domain Name <plastiform.com> and Complainant maintains a competing website at “www.plastiform.net”.

Respondent has been commonly known by the Domain Name, having begun personally using the Mark in the corporate name The Plastiform Company in 1996, and having continued to be known under that business name with full knowledge of and without objection of Complainant. In fact, Respondent asserts, Complainant and Respondent would share a trade show booth in which Respondent displayed its corporate name that incorporated the disputed Mark and Domain Name.

Respondent denies that it is making commercial use of the Domain Name for commercial gain to misleadingly divert consumers. Respondent has been using the PLASTIFORM Mark since Mr. Lane began doing business with Complainant in 1991 and has been using the Mark as a business name, The Plastiform Company, in Washington since 1994. Respondent denies that it has been misleading consumers and asserts that name recognition associated with the Mark has been firmly established in Respondent, not Complainant. According to Respondent, Complainant is attempting to profit from the goodwill in the Mark established by Respondent since 1991.

Respondent’s Exhibit 8 shows that Respondent’s Domain Name was registered in 1996. Exhibit 6 shows Respondent’s web pages, which Respondent contends confirm that the site was and continues to be use for the purpose of promoting Respondent’s sale of concrete forms which are sold under the same Mark as the website.

Registered and used in bad faith

The Domain Name was registered in 1996 by Respondent doing business as The Plastiform Company, a Washington corporation, a decade before Complainant decided to begin marketing competing products himself, according to Respondent. Respondent asserts that the Domain Name website promoted the sale of concrete forms, within the class of goods described by Complainant in the California registration. Respondent states that it sold that product under license from Complainant at the time of registration of the Domain Name and continued to sell the same products until the license was terminated, since which time Respondent has continued to sell similar products.

Respondent alleges that Complaint’s assertions to the Panel are made in bad faith and are “blatant misrepresentations”. Respondent argues that the evidence shows that Complainant’s assertion that Respondent registered the Domain Name “principally for the purpose of disrupting the business of Complainant” is absurd. According to Respondent, the Domain Name was registered in 1996 during the period in which Complainant contracted with Respondent to manufacture and sell Complainant’s product, and contrary to Complainant’s assertion, the Domain Name was registered to promote sale of Complainant’s product which would as a consequence derive more royalties to Complainant.

Reverse domain name hijacking

Respondent submits that all criteria for a finding of reverse domain name hijacking are met by the facts of this case and requests that the Panel make such a finding.

Surreply

Respondent states that none of the correspondence submitted by Complainant in Annex 1 to the Reply Brief refers to the use or ownership of the PLASTIFORM Mark. According to Respondent, the correspondence confirms that the contract relations between the parties began to fall apart in 2002 and ended in a failure to renew the Patent License Agreement. Respondent argues that the letters contain no reference to use or ownership of the trademark PLASTIFORM and no objection to its use. Respondent contends that the letters “inherently acknowledge that Respondent has been selling Complainant’s product under the mark PLASTIFORM”.

Respondent contends further that in the April 25, 1992 “Plastiform TM Shipping Instructions” document submitted as Annex 4 to the Complaint, Mr. Hall’s use of the TM with the Plastiform Mark was “expressing a claim for Respondent to a common law right to exclusive use of the mark by Respondent”. Respondent argues that this document evidences that at least as early as 1994, Respondent was selling Complainant’s product under the PLASTIFORM Mark without objection by Complainant.

Respondent argues that Complainant has not refuted nor in any way addressed Respondent’s use of the PLASTIFORM Mark since 1991, or Respondent’s use and ownership of its website since 1996, or the other evidence of Respondent’s use of the mark provided by Respondent in its Response.

Respondent asserts that, contrary to Complainant’s assertion of misrepresentation, Respondent has not made any representation to this Panel that was not fully and honestly true and accurate.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the respondent’s domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Indisputably the Domain Name <plastiform.com> is identical to the PLASTIFORM Mark at issue in this proceeding. The addition of the suffix “.com” does not distinguish the Domain Name from the Mark. Omyacolor S.A. v. Recep Tanisman - Emko Emaye A.S., WIPO Case No. D2005-0520. However, Complainant’s rights to the PLASTIFORM Mark for purposes of Paragraph 4(a)(i) of the Policy are in dispute. Ownership of the PLASTIFORM Mark is hotly contested between the parties, both claiming common law rights to the Mark by virtue of years of usage. Neither party has submitted any evidence of any federal, state or foreign registration of the PLASTIFORM Mark prior to the registration of the Domain Name in 1996, or thereafter, until Complainant’s California Registration of the Mark nine years later in March 2005.

Although Complainant claims first use of the Mark in 1987, as recited in the California Registration, the earliest document in the record which demonstrates actual usage of the PLASTIFORM Mark is an April 25, 1994 communication from Rola Industries, Inc. to Complainant entitled “PLASTIFORM TM Shipping Instructions”. (Complainant’s Reply Brief, Annex 2). Both parties point to this document as evidence of their early use of and rights in the Mark, but the Panel considers the document both ambiguous and inconclusive on the issue of the parties’ respective rights to the PLASTIFORM Mark.

Complainant alleges, and Respondent agrees, that for at least a ten year period between 1994 and 2004, Respondent manufactured and sold products pursuant to a license of patent rights from Complainant. Respondent was incorporated under the name The Plastiform Company in November 1994. (Response, Exhibit 1). Respondent registered the Domain Name <plastiform.com> in May 1996. (Complaint, Annex 1; Response, Exhibit 8). In January 1999, Respondent exhibited Plastiform products at the World of Concrete trade show, and its advertisement in the trade show brochure not only set forth both Respondent’s corporate name and its Domain Name, but also referred to its products as “Plastiform TM forms”. (Response, Exhibit 5).

It is inconceivable that Complainant was unaware during this period of these uses of the PLASTIFORM Mark by Respondent. And Complainant does not deny knowledge of Respondent’s long use of the PLASTIFORM Mark in the corporate name and the Domain Name, and with respect to the Licensed Products; he merely argues that he did not license trademark rights to Respondent or consent to Respondent’s registration of the Domain Name.

Neither party has submitted any document setting forth the terms of the contractual relationship between the parties between 1994 and January 28, 2000, the date of the written Patent License Agreement which has been submitted to the Panel by Respondent. (Response, Exhibit 3). As Complainant contends, the January 28, 2000 Agreement is silent on the issue of trademark rights to PLASTIFORM; the Licensed Intellectual Property under the Agreement consists of patent rights only. Complainant argues that the absence of a license of trademark rights in the Agreement negates any rights of Respondent to use the PLASTIFORM Mark in the Domain Name. However, the silence of the Agreement on trademark rights is equally subject to an inference that Complainant did not then assert any affirmative rights in the PLASTIFORM Mark or make any objection to Respondent’s prior or continuing use of the Mark in Respondent’s corporate name, Domain Name, or product advertising and sale. Respondent continued to use the Mark in this fashion throughout the remainder of the term of the Agreement.

Despite Complainant’s breach and termination letters to Respondent in 2002, the parties seem to agree that the Agreement continued in effect at least through 2004, and the documents submitted by Complainant indicate it was in fact not formally terminated until November 2005. Beginning in January 2005, Complainant’s attorney sent Respondent a series of letters claiming patent infringement and various breaches of the Agreement, demanding that Respondent cease manufacturing and selling Plastiform products, and ultimately advising Respondent that the Agreement had terminated on November 16, 2005.

None of the 2001-2005 communications from Complainant and his attorney to Respondent before or after the California Registration specifically asserted trademark infringement, but instead framed their demands for Respondent to cease advertising and selling Plastiform products in terms of termination of patent license rights.

During this time, Complainant incorporated Green Plastics in February 2005 and obtained the California Registration of the PLASTIFORM Mark on March 10, 2005, apparently, as Respondent contends, to begin manufacturing the Licensed Products himself.

Since termination of the Agreement, both Complainant and Respondent have used the PLASTIFORM Mark in their respective domain names and at trade shows for the purpose of advertising and sale of their similar and competing products.

In January 2006 and in January 2007, Respondent continued to participate as an exhibitor in the World of Concrete trade show and used the PLASTIFORM Mark in the trade show brochures as before - in its corporate name; in reference to its Domain Name website; and in the text describing its products as “Plastiform TM forms”. (Response, Exhibit 5). Respondent contends that its Plastiform products sold after termination of the Agreement are not within Complainant’s patent claims although they are similar to and compete with Complainant’s patented products. Complainant has not directly challenged this contention in this proceeding.

After termination of the Agreement, Complainant began manufacture of his patented products and in 2006 and 2007 advertised and exhibited them for sale using the PLASTIFORM Mark. Complainant’s “Plastiform Manufacturing” advertisement in the January 2006 World of Concrete trade show brochure shows that Complainant was using the Plastiform Mark in his business name, in his website at “www.plastiform.net”, and in references to his own products: “PlastiForm manufacturing is the sole producer of all plastiform products and the original patent holder….PlastiForm is guaranteed for 7 years.” (Response, Exhibit 5). In January 2007, Complainant’s World of Concrete trade show listing stated that “PlastiForm/Green Plastics is the sole producer of all authentic Plastiform products and the original patent holder” and referred to another website at “www.plastiformconcreteforms.com”. (Response, Exhibit 5.)

In August 2007, Complainant first specifically asserted trademark rights to the PLASTIFORM Mark in a letter from his attorney to Respondent. The Complaint in this UDRP proceeding was filed two weeks later, seeking transfer of the Domain Name. In the Complaint, Complainant asserts rights in the PLASTIFORM Mark pursuant to the 2005 California Registration as well as common law rights based on alleged use since 1987.

Respondent, however, asserts that it owns all rights to the PLASTIFORM Mark by virtue of its substantial investment in and long use of the Mark in its business name and in connection with the manufacture, advertising and sale of its plastic form products since 1994, whether its plastic form products were manufactured and sold pursuant to the patent license or otherwise. (In this respect, at least, Respondent agrees with Complainant - that the trademark rights to the PLASTIFORM Mark were not licensed to Respondent under the Agreement).

Complainant has produced no independent evidence of his own use of the Mark since 1987 as recited in the California Registration. On the contrary, the record shows that since Respondent’s incorporation around the time of the commencement of the patent license relationship between the parties in 1994, the Mark has principally been used by Respondent - in its corporate name; in the Domain Name; in connection with the manufacture, advertising and sale of the Licensed Products until termination of the Patent License Agreement; and thereafter in connection with the manufacture and sale of Respondent’s own plastic form products.

However, the California Registration is at least evidence that Complainant has had some registration rights in the PLASTIFORM Mark since March 2005, whether or not they may be subject to challenge as alleged by Respondent. In addition, Respondent’s Exhibit 5 of trade show brochures shows that Complainant was exhibiting various products and doing business under the name Plastiform Manufacturing from 2003 through 2006, that Complainant has used two domain names incorporating the Mark in 2006 and 2007, and that Complainant has been using the Mark since termination of the Patent License Agreement in connection with the advertising and sale of its own manufactured patented products. The Panel also notes that the record does not include documents evidencing Respondent’s objection to Complainant’s use of the PLASTIFORM Mark in these fashions prior to the commencement of this UDRP proceeding.

The scope of the parties’ respective rights in the PLASTIFORM Mark and the merits of any trademark infringement or other claims asserted by the parties can not be fully explored or resolved in this UDRP proceeding. Here the issue for determination is simply whether the Complainant has shown rights in the PLASTIFORM Mark sufficient to satisfy the first element of his claim under Paragraph 4(a)(i) of the Policy. However, in view of the Panel’s findings with respect to Respondent’s rights and legitimate interests in the Domain Name under Paragraph 4 (a)(ii) of the Policy, and with respect to the issue of bad faith registration and use under Paragraph 4(a) (iii) of the Policy, the Panel deems it unnecessary to decide the issue of Complainant’s rights under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:

(i) before any notice to the respondent of the dispute, respondent used, or made 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or

(iii) respondent is 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.

The Panel finds that Respondent has established rights and legitimate interests in the Domain Name. The record shows that for over a decade before notice of the dispute, Respondent used a corporate name corresponding to the Domain Name in connection with the bona fide offering of goods and services pursuant to a patent license from Complainant. Respondent’s use of its corporate name was made with Complainant’s full knowledge and acquiescence, as is evident from the 2000 Patent License Agreement and the Plastiform Company royalty checks endorsed by Complainant. Similarly, the Panel notes that Respondent registered and used the Domain Name in connection with this bona fide offering of goods and services for over eight years before notice of the dispute, with the knowledge of and without objection by Complainant. Thus Respondent has proved rights and legitimate interests in the Domain Name pursuant to Paragraph 4 (c) (i) of the Policy.

Further, Respondent’s proof that since 1994 it has been commonly known as The Plastiform Company, a name Complainant himself asserts is identical to the Domain Name, also establishes Respondent’s rights and legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy, regardless of whether Respondent has any trademark rights to the PLASTIFORM Mark.

For these reasons, the Panel finds that Complainant has failed to prove the second element of his claim under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that Complainant’s proof of any one of a non-exclusive list of four circumstances will constitute evidence of the registration and use of the domain name in bad faith. In this case, Complainant asserts that Respondent has registered and used the Domain Name in bad faith pursuant to Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, which provide that the following circumstances, if proved by Complainant, are evidence of bad faith:

(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or of a product or service on respondent’s website.

The Panel finds that the Domain Name was not registered for the purpose of disrupting the business of a competitor, as required by Paragraph 4(b)(iii) of the Policy. In 1996, when Respondent registered the Domain Name, Complainant was not a competitor but a licensor who would and did receive royalties from Respondent’s sales of the products marketed and sold through the Domain Name.

For the same reason, the existence of the patent license agreement between the parties, the Panel also finds that the Domain Name was not registered in bad faith, or used in bad faith by Respondent prior to the termination of the Patent License Agreement, for the purpose of misleading Internet users or creating a likelihood of confusion as to the source of the products sold by Respondent pursuant to Complainant’s patent license. Whether the current use of the Domain Name website for advertising and sale of competing products might in another case be found to constitute a bad faith use within the meaning of Paragraph 4(b)(iv) of the Policy is a determination that need not be made by the Panel in this case. The Panel finds that the registration of the Domain Name was not in bad faith, and Complainant’s claim for transfer of the Domain Name must therefore fail, as the third element of the claim requires proof of both bad faith registration and bad faith use to satisfy Paragraph 4(a)(iii) of the Policy. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 and Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555.

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines “reverse domain name hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of either the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.

Although Complainant has failed to prove all elements of its claim for transfer of the Domain Name, the Panel does not find that Complainant brought this proceeding in bad faith. The parties’ respective rights to use the PLASTIFORM Mark are contested and cannot be conclusively determined in this UDRP proceeding.

In conclusion, this is not a true cybersquatting case but a dispute arising from a commercial divorce between an inventor and a patent licensee who for many years mutually profited from the licensee’s manufacture and sale of the inventor’s patented product, without worrying about trademarks or domain names, until they decided to go their separate ways and compete with each other by manufacturing and selling similar products under the same name.

Any claims the parties may have against each other for trademark infringement, patent infringement, breach of contract, unfair competition or any other cause of action are better determined in another forum, perhaps arbitration under the terms of the Agreement, perhaps in litigation. This UDRP proceeding was designed only to determine their respective claims to the disputed domain name.

This Panel has therefore decided only that Complainant has not proved the requisite elements of a claim for transfer of the Domain Name and that Respondent has not established reverse domain name hijacking. Simply put, the Panel does not find that either party has established bad faith on the part of the other within the meaning of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied, and Respondent’s request for a finding of reverse domain name hijacking is also denied.


Dana Haviland
Sole Panelist

Dated: October 16, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1206.html

 

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