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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rigidized Metals Corporation v. Rimex Metals (UK) Ltd.

Case No. D2006-0662

 

1. The Parties

The Complainant is Rigidized Metals Corporation, Buffalo, New York, United States of America, represented by Harter, Secrest & Emery, LLP, United States of America.

The Respondent is Rimex Metals (UK) Ltd., Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrars

The disputed domain names <rigidized.biz>, <5wl.com> and <6wl.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com and Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2006. On May 26, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com and Network Solutions, LLC. a request for registrar verification in connection with the domain names at issue. On May 29–31, 2006, CSL Computer Service Langenbach GmbH dba Joker.com and Network Solutions, LLC. 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 June 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2006. The Response was filed with the Center on June 21, 2006. Subsequently, the Complainant delivered a Reply.

The Center appointed Edward C. Chiasson, Q.C. as the sole panelist in this matter on June 29, 2006. The panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was constituted properly.

 

4. Factual Background

The following information derives from the Complaint and material delivered with it.

The Complainant is the owner of the following United States trademark registrations:

A. Registration No. 1566738, which issued on November 21, 1989, for the mark 5WL in connection with “structurally reinforced ferrous and nonferrous metal sheets” in International Class 006 and former United States Class 014. The Complainant first used this mark in commerce at least as early as December of 1945.

B. Registration No. 1594850, which issued on May 8, 1990, for the mark 6WL in connections with “structurally reinforced ferrous and nonferrous metal sheets” in International Class 006 and former United States Class 014. The Complainant first used this mark in commerce at least as early as June of 1943.

C. Registration No. 0412299, which issued on February 27, 1945, for the mark RIGIDIZED in connection with “structurally reinforced ferrous and non-ferrous metal first used this mark in commerce at least as early as August of 1944.

The Complainant is the owner of the following Canadian trademark registrations:

A. Registration No. TMA 357,314, which issued on June 16, 1989, for the mark 5WL in connection with “structurally reinforced ferrous and non-ferrous metal sheets”.

B. Registration No. TMA 357,265, which issued on June 16, 1989, for the mark 6WL in connection with “structurally reinforced ferrous and non-ferrous metal sheets”.

C. Registration TMA 356,964, which issued on June 9, 1989, for the mark RIGIDIZED in connection with “structurally reinforced ferrous and non-ferrous metal sheets”.

The Complainant also owns the following trademark registrations:

A. German Registration No. 1,087,075, which issued on January 24, 1986, for RIGIDIZED in connection with “structurally reinforced ferrous and non-ferrous metal sheets”.

B. Mexican Registration No. 478731, which issued on September 22, 1994, for RIGIDIZED in connection with “structurally reinforced ferrous and non-ferrous metal sheets”.

C. South African Registration No 84/4559, which issued on May 21, 1984, for RIGIDIZED.

D. Swiss Registration No. 343.658, which issued on July 26, 1985, for RIGIDIZED in connection with “ferrous and non-ferrous metal plates”.

The Complainant sells “structurally reinforced ferrous and non-ferrous metal sheets” in the following countries under the marks 5WL, 6WL, and RIGIDIZED: United States, Canada, United Kingdom, Brazil, Mexico, Hong Kong, Taiwan, Province of China, Peoples Republic of China, Australia, Germany, India, Iran, Japan, the Republic of Korea, Malaysia, New Zealand, Philippines, Singapore, Switzerland, Thailand, Turkey, and South Africa. The Complainant also has service centers in the following countries: United States, United Kingdom, Mexico, Taiwan, Province of China and Peoples Republic of China.

The United States registrations are incontestable and serve as conclusive evidence of the Complainant’s exclusive right to use the marks in the United States for the goods listed in the registrations.

The Complainant has built substantial goodwill in its marks 5WL, 6WL, and RIGIDIZED and has sold structurally reinforced ferrous and nonferrous metal sheets under these trademarks since at least as early as December of 1945, June of 1943, and August of 1944, respectively, in the United States and numerous other countries.

The Complainant’s gross revenue for products sold under the trademark 5WL in 2002 and 2003 was well over $2 million per year, in 2004 was more than $3 million and in 2005 exceeded $5 million. The Complainant’s gross revenue for products sold under the trademark 6WL in 2002 and 2003 was more than $1 million per year, and in 2004 and 2005 was well over $2 million per year. The Complainant’s gross revenue for products sold under the trademark RIGIDIZED in 2002 and 2003 was over $8 million per year, in 2004 was more than $13 million, and in 2005 well exceeded $15 million.

As is shown by the Complainant’s gross revenue for 5WL and 6WL brand products and products sold under the RIGIDIZED trademark, the Complainant is an industry leader in the sale of the products sold under such trademarks.

The Complainant spends in excess of $95,000 per year in advertisements and marketing for products sold under the 5WL and 6WL trademarks. Also, the Complainant’s sales and marketing budget for products sold under the RIGIDIZIED trademark is well over $1 million per year. The Complainant mainly advertises and markets using 5WL, 6WL, and RIGIDIZED using company brochures, online advertisements, websites, tradeshows, print advertisements and through its company representatives.

The Respondent does not have a license or permission to use 5WL, 6WL, or RIGIDIZED.

The Respondent is offering competing goods for sale in the United States and around the world under the names 5WL and 6WL, on websites with domain names <5wl.com>, <6wl.com>, and <rigidized.biz>. Printouts from the Respondent’s websites also show the Respondent’s use of RIGIDIZED in connection with its sale of goods.

The domain name <rigidized.biz> resolves directly to the Respondent’s web page. “www.archive.org” shows archived websites that appeared on <rigidized.biz> from January of 2004 through February of 2005.

At some point in 2006, the Respondent changed <5wl.com> and <6wl.com> from transporting users to Respondent’s website to an “under construction” page. Even though <5wl.com> and <6wl.com> are “under construction,” the subject domain names remain registered to the Respondent. At least as late as July 21, 2005, the subject domain name <5wl.com> directed users to the Respondent’s website. “www.archive.org”, shows archived websites that appeared on the domain name <5wl.com> on various dates from 2003 through September 22, 2004. Also, at least as late as July 27, 2005, users were directed to the Respondent’s website from <6wl.com>.

The Respondent uses 5WL, 6WL, and RIGIDIZED on its websites to offer structurally reinforced ferrous and nonferrous metal sheets for sale. A comparison of the websites of the parties shows that the Respondent is making prominent use of the Complainant’s trademark. On its website, the Respondent is offering products for sale that directly compete with the Complainant’s products, under the Complainant’s trademarks, on websites with domain names that are identical to the Complainant’s trademarks.

The Respondent is not known commonly by the subject domain names.

The Respondent registered the subject domain names <5wl.com> and <6wl.com> on or about April 26, 2000, and the subject domain name <rigidized.biz> on or about November 15, 2001. At the time the Respondent registered the subject domain names, the Complainant had been using 5WL, 6WL, and RIGIDIZED in connection with “structurally reinforced ferrous and nonferrous metal sheets” in commerce for more than 50 years. Also, at the time the Respondent registered these domain names, the Complainant had been the owner of United States and Canadian Trademark Registrations for 5WL and 6WL for approximately 10 years and the owner of a United States trademark registration for RIGIDIZED for more than 50 years.

The Respondent’s websites do not contain a disclaimer that informs Internet users that the Respondent is not affiliated with or sponsored or endorsed by the Complainant.

The Respondent is aware of the process of trademark registration in the United States, because it has such registrations.

In the 1990s, the Complainant became aware that the Respondent was using the Complainant’s trademarks 5WL and 6WL on the Respondent’s website in connection with the sale of textured metal sheets. In late 1997 and through 1998, the Complainant’s former counsel demanded that the Respondent change the references to 5WL and 6WL on its website or cease using such trademarks. In response, the Respondent minimally changed its website references to use 5WL and 6WL as “ROW [Rest Of World] reference[s]” and “5-SM” and “6-OM” as “USA Reference[s]”.

The Complainant has registered <rigidized.com>.

Prior to June 21 and 27, 2005, from <5wl.com> and <6wl.com> an Internet user could select the preferred language, then the Internet user was transported to a page entitled “Rimex Metals Group” at the following addresses: “www.5wl.com/home.cfm” and “www.6wl.com/home.cfm”. From this “Rimex Metals Group” website, an Internet user could pull down the “Products” menu and select “Textured.” The Internet user was then taken to a web page offering information on products that Respondent sells under the Complainant’s trademarks 5WL and 6WL. The Respondent’s websites also had “Terms and Conditions,” which provided the terms of sale.

The following information derives from the Response and the material delivered with it.

The Respondent acknowledges that the Complainant owns various trademark registrations for RIGIDIZED, 5WL and 6WL in a number of countries outside the United Kingdom of Great Britain and that they are identical to the subject domain names.

If the Complainant’s marks were challenged, the Complainant’s registrations are likely to be declared invalid by reason of the fact that the marks have become customary in the bona fide and established practices of the trade to designate strengthened (“rigidized”) and patterned (“5WL” and “6WL”) metals.

The Respondent has prior rights to use such marks in the United Kingdom. From 1959 to 1997, the Respondent was registered at Companies House as, and traded under the name, Rigidized Metals Ltd. From 1960 onwards, the Respondent has manufactured and sold metal products featuring the patterns known as 5WL and 6WL.

“Rigid” is a word meaning stiff and inflexible. “Idize” is a common suffix signifying to make, to do, or to practice. The term “rigidized” indicates a process by which an object is strengthened. In this case, the relevant strengthening process involves embossing three-dimensional patterns into flat-rolled metal, which adds surface texture. The Respondent produced an explanatory sheet in the 1970s for marketing purposes, which included images of the particular embossed patterns known throughout the industry as 5WL and 6WL (the Patterned Metal). The suffix “WL” is shorthand for “wavy lines” which aptly describes the overall visual effect created by the Patterned Metal.

An Internet search carried out by the Respondent revealed numerous third-party websites using the word “rigidized” to describe patterned metal products. Among those third parties are manufacturers and suppliers of sheet metals, steel doors, elevators and toilet stalls, including competitors of the Respondent.

The Respondent was incorporated on December 18, 1959 under the name “Rigidized Metals Limited”. By 1997, the Respondent realized that it could not claim exclusive rights in “rigidized” due to its generic nature and changed its name to Rimex Metals (UK) Limited.

In 1959, the Respondent was granted a licence to use the Complainant’s technology to make metal sheets in accordance with the rigidizing process devised by the Complainant. The licence envisaged that the Respondent would use the Complainant’s trademarks under licence together with its technology. The Respondent paid royalties under the licence for a period of five years.

The Respondent used the name Rigidized Metals Limited, without interruption or objection from the Complainant, until 1997. It has been using 5 WL and 6 WL since the early 1960s and continues to do so. Any goodwill in those designations (except in North America where the Complainant trades) would be owned by the Respondent, as a consequence of the Respondent’s intensive use without any connection to the Complainant.

From 1959 to 1997, the Respondent’s activities under the name Rigidized Metals (UK) Limited were extensive. In 1996, shortly before its change of name, the Respondent’s United Kingdom turnover exceeded Ј11 million ($20 million). Marketing materials were produced by the Respondent to promote its business and services under the “Rigidized” name. These materials and the Respondent’s current sales brochure show that it long has been using the signs 5WL and 6WL to describe Patterned Metals.

From 1960 to the present, the Respondent has had extensive international dealings concerning the Patterned Metals under the signs 5WL and 6WL.

The Respondent has been producing surface finishes on stainless steel and other surfaces for over forty years. It trades throughout the world through manufacturing facilities in the United Kingdom, United States, Australia and elsewhere, stocking and distribution companies in Germany, Ireland, France and Spain and a global network of agents and distributors. Further information about the Respondent’s current business activities can be found on its website at “www.rimexmetals.com”.

The Respondent is a market leader in textured metal products in the United Kingdom and elsewhere. The Respondent’s financial statements for the year ending August 31, 2004, show that the Respondent’s United Kingdom turnover in 2004 exceeded Ј12 million ($22 million). The Respondent’s group turnover for the same period was over Ј17 million ($31 million).

The Complainant has no real trading presence outside North America whereas the Respondent is the market leader in the United Kingdom and the rest of the world (except North America).

While the Complainant has referred to numerous trademark registrations across the world, the Respondent questions whether these registrations can be supported by evidence of genuine use in those territories.

The Complainant’s website is focused on North America and unlike the Respondent’s website, does not refer to any overseas projects, is written only in English and features a “contact us” page without international dialing codes for the company’s fax and telephone numbers.

The Respondent registered <5wl.com> and <6wl.com> in 2000 and <rigidized.biz> in 2001 for two reasons:

(a) at that time, the marks incorporated in the subject domain names were being used in the metal industry generically, to describe products for which the Respondent was well known; and

(b) until the late 1990s, the Respondent had traded exclusively under the “Rigidized” name and was identified strongly by consumers in relation to that name; the Respondent had been using 5WL and 6WL since 1960 and intended to continue to do so; the Respondent wanted to ensure that any online customers seeking to find it through Internet search engines, by reference to its former name or its products, would be able to do so.

The Complainant is fully aware of the Respondent’s legitimate interests in the subject domain names and has been aware of these for a very long time indeed by reason of the Respondent’s long use of 5WL, 6WL and RIGIDIZED.

The Complainant states that in the late 1990s, it asked the Respondent to remove the references on its website to 5WL and 6WL. Notwithstanding the fact that the Respondent was and is the market leader for rigidized Patterned Metal, at least in territories outside North America, due to the international nature of the Internet and as a gesture of goodwill in recognition of the Complainant’s sizable reputation in the United States, the Respondent agreed to use different designations for the Patterned Metal in the United States where the Complainant operates. In a further act of good faith, the Respondent reflected this policy in its offline marketing materials.

The Respondent assumed that the Complainant was content with this arrangement because, prior to initiating this proceeding, the Complainant said nothing on the subject for well over a year.

The Respondent has not included a disclaimer on its website because the marks are generic and customers do not distinguish one manufacturer from another.

The Complainant and the Respondent are focused on different regions of the world and to this extent, are not direct competitors.

The subject domain names currently are inactive while the Respondent undertakes a detailed review of its online activities in various territories. As part of this review, the Respondent will determine to which of the Rimex Group websites the subject domain names should resolve in the future.

The following information derives from the Complainant’s Reply.

As a licensee, the Respondent’s use of the Complainant’s trademarks in the United Kingdom under a license agreement inured to the Complainant. The Respondent obtained no rights to the marks that it was using under the license. Although the Respondent, was the first to use the marks in the United Kingdom, the Respondent admits that it continued to use the Complainant’s trademarks after it stopped paying the license fee, which is clearly an infringing use of the trademarks.

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of 5WL, 6WL and RIGIDIZED. The subject domain names are identical to the Complainant’s marks. Whether the Complainant’s registration could be attacked on the basis that the marks are generic is not relevant to this proceeding.

The Complainant asserts that the Respondent’s continued use of the Complainant’s marks after the license agreement authorizing such use expired is an infringement leading to a lack of a legitimate interest in the subject domain names.

Registration and use of the subject domain names with clear knowledge of the Complainant’s rights is bad faith.

The Complainant denies that it brought this proceeding in bad faith in an attempt to reverse highjack the subject domain names.

B. Respondent

The Respondent admits that the Complainant has registered 5WL, 6WL and RIGIDIZED as trademarks and that the subject domain names are identical to the marks, but asserts, “…the Complainant has no protectable interest in this case. Public policy dictates that generic signs should be freely available for use by all traders”.

The Respondent relies on its extensive use of the marks for many years and in markets essentially different from the Complainant’s market to contend that it does have a legitimate interest in the subject domain names.

The Respondent denies bad faith and states that it registered the subject domain names for its own legitimate business purposes.

The Respondent contends that the Complainant is attempting a reverse hijacking of the subject domain names.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to 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) 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.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;

(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The parties rely on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

It is common-ground that the subject domain names are identical to the marks of the Complainant, but the Respondent asserts that the registrations of the marks are vulnerable because the marks are generic.

The Complainant asserts that the Administrative Panel must take the registration as they are. The Administrative Panel agrees.

A domain name dispute proceeding generally is not an appropriate forum to resolve question involving the legitimacy of trademark registrations or infringement.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent is not known by the subject domain names and that any continued use of the Complainant’s marks was an infringement. The Respondent denies infringement on the basis that the registrations are not sustainable because the marks are generic.

This proceeding is not an appropriate forum to decide whether there has been an infringement. The marks are registered; the Respondent has used them extensively.

The Respondent was known by the word “rigidized” for many years and used 5W” and 6WL for many years. To accommodate the Complainant, the Respondent altered its use in the United States market, which it asserts is the main market of the Complainant.

The Complainant has registered its marks in many countries, but on the information provided to the Administrative Panel, it appears that the Respondent is the market leader in markets outside the United States. It certainly is the market leader in the United Kingdom.

The focus of a domain name dispute proceeding in the context of the second inquiry under the Policy is not on whether trademarks have been infringed, but on whether a respondent has a legitimate interest in a domain name. It may do so, but still be guilty of infringement, particularly in circumstances where there has been long use of a mark and it is contended that the mark has become generic.

The long history of the Respondent’s use of 5WL, 6WL and RIGIDIZED in its business militates against a finding that it does not have a legitimate interest in the subject domain names. It may be that the Complainant could establish in another forum that the Respondent’s use of 5WL, 6WL and RIGIDIZED is an infringement, but on the information presented in this proceeding, the Administrative Panel is not satisfied that the Respondent does not have a legitimate interest in the subject domain names.

C. Registered and Used in Bad Faith

The Respondent contends that it registered, used and will use the subject domain names to further its legitimate business interests. For the reasons given in considering whether the Respondent has a legitimate interest in the subject domain names, the Administrative Panel is not prepared to conclude that the subject domain names were registered and used in bad faith.

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case and it is dismissed.

The Administrative Panel also concludes that the Complainant was not attempting to reverse highjack the subject domain names. It has trademark registrations in many countries and uses its marks extensively in its business. The Respondent previously respected the Complainant’s interest in the United States. Seeking to protect those interests in this proceeding was not illegitimate.

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Edward C. Chiasson, Q.C.
Sole Panelist

Dated: July 13, 2006