The Complainant is Beegrip Ltd, United Kingdom (“UK”), represented by Marks & Clerk LLP, UK.
The Respondent is Vincent Richard, Richard Vincent / VinMar Surface Coatings Inc. , Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 7, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Response was filed with the Center on November 1, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 6, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThis is a dispute between the manufacturer of a product and one of its distributors or former distributors.
At some point, it would appear to have been at least in the early 1990s, R S & Clare & Co. Limited (“Clare”) or its predecessor developed a product or range of products under or by reference to the trademark, BIMAGRIP.
The Bimagrip product (or range of products) is a form of anti-skid coating which has been particularly successful in the marine industry but has also found applications in civil engineering projects on land such as bridges amongst other things.
Clare (or its predecessor) obtained a number of registrations for the trademark BIMAGRIP including:
(a) UK Registered Trademark No UK00001529463, BIMAGRIP, in respect of Polyurethane resins incorporating aggregate finishes, for use in the provision of anti-slip surfaces for use by pedestrians, cycles, or motor vehicles; all included in International Class 1. This trademark was entered in the Register on June 17, 1994; and
(b) Canadian Registered Trademark No. TMA498846, BIMAGRIP, in respect of waterproofing compositions and surface coatings apparently registered in International Classes 1, 2, 6, 12, 19 and 27. This trademark was filed on December 16, 1996 and registered on August 18, 1998.
The first and second Respondents are brothers and two of the four principals of the corporate Respondent.
In 2009 or 2010 (the Complainant says “not later than 2010”, the Respondents say 2009), Clare appointed the Respondents (or one of them) as its distributor of Bimagroup products for North America.
The distributorship does not appear to have been recorded in writing although the Complainant has submitted a witness statement of Mr. Vann (the current Managing Director of Clare); dated August 24, 2021 which refers to an “attached” letter dated August 15, 2010, to a third party as confirming the appointment. The letter, however, has not been attached. The Respondents have been distributing the Bimagrip products in North America since then.
According to the Response, the first and second Respondents registered the disputed domain name in connection with the distributorship on August 14, 2009. Since then, the Respondents have been using the disputed domain name in connection with the promotion and distribution of Bimagrip products in North America.
According to the Response, when the Respondents received orders for the product outside North America, they passed the orders along to Clare.
In December 2017, Clare sold its Bimagrip products business to the Complainant. This was in effect a “management buy-out” effected over a three year period, finally concluded in October 2020. The executives of the Complainant were formerly officers or employees of Clare.
As part of the sale, Clare assigned its rights to the BIMAGRIP trademark, including the registered trademarks, to the Complainant.
Although the assignment document submitted as Annex 7 to the Complaint does not specifically reference the UK registered trademark, the Complainant is recorded as the owner of the UK trademark in the UK Register and Mr. Vann, in his capacity as Managing Director of Clare, has confirmed through a Witness Statement, the assignment.
While the assignment to the Complainant of the trademark in the UK has been recorded in the Register, the assignment has not been recorded as yet in the Canadian Register, which still shows Clare as the registered owner.
Following the sale of the Bimagroup business to the Complainant, the Complainant requested that the Respondents transfer the disputed domain name to it and offered a discounted price for future purchases of product. The Respondents refused this request, citing their registration and use of the disputed domain name for the previous 12 years as a result of which, the Respondents say, they have become known by and associated with the disputed domain name in North America.
5. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe Complainant has proven ownership of the UK registered trademark for BIMAGRIP.
While Clare is the legal owner of the Canadian registered trademark, the Trademark Assignment document executed between Clare and the Complainant would appear to give the Complainant a specifically enforceable right to be registered as the owner of the registered trademark as well – at least as against Clare. The Panel considers this equitable interest is sufficient to give the Complainant standing under the Policy to claim ownership of, or rights in, the Canadian registered trademark as well.
The Panel is fortified in that view by Mr Vann’s Witness Statement confirming Clare’s recognition of the Complainant’s rights.
Disregarding the “.com” generic Top-Level Domain as a functional requirement of the domain name system (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11), the disputed domain name is identical to the Complainant’s proven trademark.
Accordingly, the Complainant has established the first requirement under the Policy.
B. Registered and Used in Bad FaithIn the circumstances of this case, it is appropriate to consider the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the Respondents admit to registering the disputed domain name in connection with the distributorship, there is no issue about their knowledge of the Complainant’s trademark.
The Complainant admits that the Respondents were appointed the distributor of Bimagrip products for North America by Clare. On the basis of Mr. Vann’s witness statement, however, the Complainant says the Respondents were not authorised to register the disputed domain name and had no authority to do so.
In contrast, the Respondents contend that their registration of the disputed domain name was approved by Mr. Vann’s predecessor as managing director of Clare and, moreover, Clare was aware of their registration and use of the disputed domain name over the years.
The Respondents point out that Mr. Vann was not actually at Clare when the relevant events occurred in 2009. For example, in his witness statement, Mr. Vann says he has held the position of managing director for five years.
On the question of the Respondents’ authorisation to register the disputed domain name, Mr. Vann says in his witness statement only that “to the best of [his] knowledge, at no point was permission to register the [disputed domain name] granted by [Clare]”.
In contrast, the Respondents rely on what they claim was said and agreed between the second Respondent and a Mr. Meadows, the then managing director of Clare. That is, the Response purports to set out what the second Respondent, a participant in the discussions, says was actually done.
More significantly, the Respondents point out that they had been using the disputed domain name quite openly and, it is to be inferred (on their case) with Clare’s knowledge, for eight years without complaint from Clare.
In these circumstances and without entering into a debate about whether the Respondents’ efforts as a distributor give it rights to continue using the Complainant’s trademark, it is not possible for the Panel to find that the Respondents registered the disputed domain name in bad faith bearing in mind the consistent rejection of so-called “retroactive” bad faith advanced in cases such as City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, AlgebraliveWIPO Case No. D2009-0643 (mummygold.com) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-SolutionsWIPO Case No. D2009-0786.
Proceedings under the Policy are proceedings on the papers without the benefit of court procedures like discovery, oral evidence and cross-examination. The dispute between the evidence of Mr. Vann, apparently at second-hand, and the second Respondent is not capable of resolution on the papers particularly bearing in mind the long passage of time in which the Respondent used the disputed domain name apparently with the knowledge and approval of Clare before it sold the business to the Complainant.
Accordingly, the Complainant has not established that the Respondents registered the disputed domain name in bad faith.
As a result the Complaint must fail as the Complainant cannot establish all three requirements under the Policy.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: December 20, 2021