WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hesco Bastion Limited v. The Trading Force Limited
Case No. D2002-1038
1. The Parties
The Complainant is Hesco Bastion Limited of Leeds, England, United Kingdom of Great Britain and Northern Ireland, represented by Walker Morris Solicitors of United Kingdom of Great Britain and Northern Ireland.
The Respondent is The Trading Force Limited (in liquidation) of Derby, England, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hescobastion.com> is registered with Network Solutions, Inc., Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2002. On November 7, 2002, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On November 12, 2002, Network Solutions, Inc., Registrar transmitted by email to the Center its verification response confirming that The Trading Force is listed as the registrant and providing the contact details for the administrative, billing and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 14, 2002. 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"), 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 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2002. The Response was filed with the Center on December 6, 2002.
The Center appointed David Perkins as the sole panelist in this matter on December 17, 2002. 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. The Partiesí Activities
4.1 The Complainant
4.1.1 The Complainantís Defence Walls and Gabion Product Range
The Complainant is based at Leeds, England. It was incorporated in 1991. Its business is the design, manufacture and sale of fortifications, known as gabions. These are described in the Complaint as collapsible cage like structures [made from wire mesh] which can be easily stored, transported and erected in minutes using a unique coil and hinge joining systems. When unfolded it forms a series of connected cavities into which stones, sand or other building or engineering materials can be packed. Its most notable use is as a protective blast wall for military applications, but it is also used to provide flood, river and sea defences and to prevent the collapse of motorway embankments. The gabion product was first used as a protective blastwall in the 1991 Gulf War and is now used by the United National Protective Force, NATO, the US Military and others. The barrier system is more particularly described in a publication entitled "Engineers Handbook HESCO BASTION Force Protection" published by TFL Defence in September 2001. That publication is Annex #1 to the Response.
4.1.2 The gabion structure is the subject of a European Patent [EP 0,466,726 B1] granted to the Complainant in November 1995 on an application originally filed in August 1990. The Complainantís gabion products are sold under and by reference to the trademark CONCERTAINER for which the Complainant holds a Community Trademark [CTM], a United Kingdom registration and a US registered trademark.
4.1.3 The Complainant states that it has established itself as one of the market leaders for this type of product and that its name is world renowned. Since 1998 total worldwide sales of the Complainantís gabion walls have exceeded US$50 million.
The Complainantís HESCO and HESCO BASTION trademarks
4.1.4 The Complainant does not rely on a trademark registration for HESCO or HESCO BASTION. Although the Complaint does not specifically assert common law, or equivalent, unregistered trademark rights in those names, it does so by implication and in reliance upon the following:
• The Complainant has established itself since 1991 as a market leader in the design and supply of defence walls and gabion products.
• The Complainantís name is "world renowned" in that market.
• From reasonable inquiry and a trademark search, the Complainant believes that
- no other person or entity trades as HESCO BASTION; and
- there is no one trading as HESCO for the Complainantís type of products
• Through the worldwide success of its defence walls and the gabion product, the Complainant asserts that it has acquired substantial goodwill in the HESCO and HESCO BASTION trademarks. Worldwide sales of its gabion products since 1998 have exceeded US$50 million [paragraph 4.1.3 above].
4.1.5 From correspondence at Annex #3 to the Response, it would appear that the Complainantís website is at "www.hesco-group.com".
4.1.6 Extensive use of the marks CONCERTAINER, HESCO and HESCO BASTION is made in the September 1991 Handbook published by TFL Defense: Annex #1 to the Response referred to in paragraph 4.1.1 above. For example:
• "Concertainer has been a key component in providing Force Protection since the 1991 Gulf War": page 1
• "Hesco Concertainer is supplied as pre-fabricated and linked baskets made of galvanised steel weldmesh, lined with soil retaining geotextile": page 2
• "The TFL Group of Companies provides a wide range of field support activities for HESCO Concertainer users": page 6
• The mark HESCO simpliciter is prominently illustrated on a Concertainer depicted on page 9.
• The mark HESCO is also used simpliciter in relation to Military Specifications [Mil 1 to Mil 10 inclusive] for "Hesco Concertainer Personnel Bunkers" [pages 39-49] and for Defence Walling [page 55 - 78].
• "HESCO is a sole source product administered by DLA (Defense Logistics Agency), Defense Supply Center, Philadelphia": page 89
4.2 The Respondent
4.2.1 According to Annex #2 to the Response [as to which, see paragraph 5.7 below] the Respondent, the Trading Force Limited, carried on business supplying humanitarian and peace-keeping equipment to the United Nations and other Military Organisations and marketing for manufacturers and suppliers operating in that field. The Respondent was incorporated in October 1989.
4.2.2 In about 1994 the Respondent asserts that it entered into an Agreement with the Complainant under which the Respondent would assist the Complainant to develop and make the Hesco Concertainer product in consideration for the payment of a commission on sales to third party customers.
4.2.3 This Agreement was, according to the Respondent, varied on a number of occasions [in September, 1997: 1999; and at the end of 2001], as a result of which varying commissions were agreed and the Respondent also undertook marketing of the Hesco Concertainer in Denmark, Holland and the United Kingdom, territories which were outside the commission arrangement of the original 1994 Agreement.
4.2.4 On April 10, 2002, Receivers were appointed over the Respondent Company and on September 5, 2002, the Respondent Company was put into liquidation pursuant to a Winding-Up Order of the English High Court and Mr. Russell John Carman was appointed Liquidator.
4.2.5 The former trading address of the Respondent was 4 Talina Centre, Bagleyís Lane, London SW6 2BW. This was also the address of TFL Defence Ltd; the publisher of the Handbook exhibited at Annex #1 to the Response; See, paragraphs 4.1.1 and 4.1.6 above.
4.2.6 The domain name in issue was registered by The Trading Force on October 8, 2001. The address of that entity is given in the Registration Particulars as 4 Talina Centre, the same address as the Respondent Company. The Response, however, states that The Trading Force is not the Respondent limited company now in liquidation. The designation The Trading Force was used by the TFL Group of Companies.
4.2.7 In the Handbook, TFL Defence Ltd is named as a part of the TFL Group of Companies, whose address is given as 4 Talina Centre, Bagleyís Lane.
4.2.8 That address is also given at the website located at the domain name in issue for both the Respondent Limited company and the TFL Group of Companies.
4.2.9 On April 30, 2002, the Explora Group Ltd ["Explora"] states that it "Ö.acquired from the Receivers and Lloyds TSB Bank Limited all the legal and equitable rights and obligations [Ö] previously owned by The Trading Force Ltd (in Administrative Receivership)Ö.": [Letter of June 12, 2002, from Explora to the Complainant, Annex #3 to the Response]. The address of Explora is 4 Talina Centre. The Response in this administrative proceeding has been filed by Explora Group PLC of the same address.
4.2.10 An executive of both the Respondent and of Explora is Mr. Francis Le Carpentier. This appears from the Particulars of Claim at Annex #2 to the Response and from e-mail exchanges between Explora and the Center in relation to this administrative proceeding.
5. Factual Background to the Dispute
The Trading Agreement between the Complainant and the Respondent
The Complainantís Case
5.1 According to the Complainant, for some years up to the beginning of April 2002, the Respondent acted as agent for the Complainant by marketing and selling the Complainantís products to defense agencies around the world. The basis of that agency was informal and arose from a course of dealing. The Complainant terminated the agency when the Respondent appointed an administrative receiver in April 2002 [see paragraph 4.2.4 above].
5.2 The Complainant states that it only became aware of the Respondentís registration [on October 8, 2001] of the domain name in issue shortly after termination of the agency in April 2002.
5.3 The agency was not an exclusive arrangement. The Complainant states that at all times it retained the right to market and sell its own products alongside the Respondent and to employ other agents to do so also.
5.4 The Complainant states that it never authorised the Respondent, or any other entity, to use its HESCO BASTION trademark as the domain name for a website.
The Respondentís Case
5.5 No substantive Response has been submitted by Mr. Carman, the Liquidator, save to challenge the jurisdiction of the Center to entertain this Complainant; see, paragraph 6.B.1 below. As stated [in paragraph 4.2.9 above] the Response has been submitted by Explora.
5.6 As set out in paragraphs 4.2.3 and 4 above, the Respondent asserts that it entered into an Agreement with the Complainant in 1994 whereunder the Respondent was to receive commission on sales of the Complainantís products. Under that Agreement [as subsequently varied on three occasions] and as a result of the Respondentís marketing efforts, demand for the Complainantís products increased and at the date when Receivers were appointed [April 10, 2002] outstanding invoices from the Respondent to the Claimant exceeded £400,000.
5.7 In a Claim issued in the Queenís Bench Division of the English High Court on November 18, 2002, the Respondent seeks the following relief:
• £206,798.52, which the Respondent maintains is the balance of the £400,000 commission due as at April 10, 2002;
• Alternatively, damages;
• An account of what is due from the Complainant to the Respondent and payment (with interest) of such sums as may be found due on taking such account; and Costs.
5.8 The Respondent contends that the Complainant had no right to terminate the Agreement in April 2002, consequent upon appointment of Receivers.
5.9 Indeed, the benefit of the Agreement was transferred by the Receivers to Explora on April 30, 2002, from which time Explora has diligently carried on the Respondentís contractual obligations to the Complainant to develop and market it products. In effect, there has been continuity of business, Explora having acquired a substantial number of staff from the TFL Group and continuing to operate from the same locations [including, Bagley Lane, London SW6], telephone number, e-mail addresses and domain names.
The Complainant takes the position that the Agreement was incapable of transfer by the Receivers of the Respondent to Explora.
5.10 According to Explora, legal proceedings have been instigated and others are pending issuance in the courts of the United Kingdom and the United States of America in relation to disputes arising from the Complainantís purported termination in April 2002, of the Agreement. These proceedings involve the Complainant, the Respondent, Explora and TFL Defence Ltd.
The Complainant states that the only legal proceeding is the High Court case filed on November 18, 2002, [see, paragraph 5.7 above].
5.11 Explora and the Liquidator assert that one of the assets acquired by Explora is the domain name in issue:
"In the specific case of the Domain Name www.Hescobastion.com The Legal owner by way of purchase (a part of the whole of the business/es) from the Administrators/Receivers of The Trading Force Ltd. on the 30th April 02 is Explora Group PLC also the parent of the TFL Group of Companies of which The Trading Force Ltd was part. The process of informing the various registries of the change of ownership are going on & will, we are informed be reflected on the registries soon. The rights to exploit the name continue as they have always been to be with TFL Defence Ltd & others companies that comprise The TFL Group of Companies". [Email from Le Carpentier to the Center dated November 14, 2002: emphasis added].
"All parties are now formally informed that the Businesses of The Trading Force Ltd including this domain name were sold by Baker Tilly (The receivers of The Trading Force Ltd) to Explora Group Plc on April 30, 2002". [Email from Mr. Le Carpentier as CEO of Explora to the Center dated November 18, 2002].
"I am aware that the Receivers of the TFL did sell all intellectual property rights, which appear to have included domain names, to Explora Group Limited although, I note from the correspondence that the domain name does not appear to have been registered for the benefit of Explora Group Limited". [Email from Mr. Carman, Liquidator of the Respondent Company, to the Center dated November 20, 2002].
"Explora Group own the website as they do the all the businesses of the TFL Group of Companies including the businesses of The Trading Force Ltd. to whom the domain name is currently registered": [Email from Mr. Le Carpentier to the Liquidator and others dated December 5, 2002.]
"The domain name was sold for good consideration by the Joint Receivers appointed in relation to the RespondentÖ.". Response, Section III paragraph 5.2(2)(c).
5.12 That assignment of the domain name in issue is now accepted by the Complainant: Supplemental Submission by the Complainant dated November 25, 2002.
5.13 According to Explora, it was the Respondentís business to represent the Complainant and to use its name with the full consent and approbation of the Complainant, as demonstrated by the Handbook, which the Response describes as "jointly approved" with the Complainant: Response, Section III paragraph A.2.
5.14 The Complainant accepts [October 8, 2001] when the domain name in issue was registered, the Respondent was an agent of the Complainant. But, the Complainant takes the position that:
• The Respondent had no right to register a domain name identical to the Complainantís HESCO BASTION trademark.
• It is not true to state, as the website to which the domain name resolves does, that "Hesco Bastion Concertainer is a product of the TFL Group of Companies/Trading Force Limited".
• And, in any event, since termination of the Agency in April 2002, the Respondent has had no entitlement to continue to own or use the domain name in issue.
6. Partiesí Contentions
A. The Complainant
6.A.1 The domain name in issue is identical to the trademark HESCO BASTION in which the Complainant has rights.
6.A.2 The Respondent has no rights or legitimate interests in respect of the domain name. In this respect the Complainant marks the following case:
First, the agreement between the Complainant and the Respondent was an agency arrangement only. It was not transferable to Explora or to any associated company of the Respondent.
• Second, the Complainant only became aware of the domain name in issue after appointment of the Receivers on April 10, 2002. Thus, it could not have consented to use of the HESCO BASTION name and mark for that purpose.
• Third, because during the period of the agency the Complainant had the right to sell its own products alongside the Respondent and to employ other agents to do so also, the Respondent could have had no bona fide right or reason to use the domain name for its own website.
• Fourth, the Respondentís website is designed to give the impression, contrary to the facts, that it has the endorsement and approval of the Complainant. It falsely indicates that the CONCERTAINER is a product of the TFL Group of Companies [see, paragraph 5.14 above] and that the Complainant and Respondent are in some way connected. This is not, the Complainant says, a legitimate fair use of the domain name.
• Fifth, the Respondent was never commonly known by the domain name. It has always been known as The Trading Force Limited or The Trading Force.
• Sixth, since termination of the Agency arrangement after appointment of the Receivers on April 10, 2002, the Respondent can claim no right to continue to own or use the domain name.
6.A.3 The domain name was registered and is being used in bad faith. Here, the Complainantís case is as follows:
&bull First, the Respondent was only an agent of the Complainant at the date when the domain name was registered [October 8, 2001] and had no exclusive right to market and sell the Complainantís products.
• Second, the domain name was registered without reference to or permission from the Complainant.
• Third, potential customers of the Complainant searching the web for the Complainant will inevitably find the Respondentís website, which links through to another website, "www.ttforce.com", which appears to be the website for the TFL Group of Companies. This will mislead or confuse such potential customers into believing that the website is owned and operated by the Complainant.
• Fourth, by registering the domain name in the first place, the Respondent was obviously trying to enhance its business and increase its commission by directing sales away from those made directly by the Complainant.
• Fifth, the use of the domain name in conjunction with the website to which it resolves was and is calculated to give potential customers the false impression that the CONCERTAINER is a product of the TFL Group of Companies.
B. The Respondent
6.B.1 The Liquidator, Mr. Carman, states it is not his intention to respond to the Complaint and that he has no objection to any party who claims an interest [for example, Explora] responding in his place: email from the Liquidator to the Center dated December 5, 2002. But, in an earlier email [email dated November 20, 2002; see, paragraph 5.11 above], the Liquidator took the position that the Complainant first requires leave of the English High Court before bringing this Complaint. This is because, so the Liquidator contends, this administrative proceeding is "an action or proceeding" within the meaning of Section 130(2) of the Insolvency Act 1986. The provision reads:
"When a Winding-Up Order has been made or a provisional Liquidator has been appointed, no action should be proceeded with or commenced against the Company or its property, except by leave of the Court and subject to such terms as the Court may impose."
The Winding-Up Order in relation to the Respondent was made on September 5, 2002; see, paragraph 4.2.4 above.
6.B.2 The Response filed by Explora first reiterates this point, contending that the Administrative Panel should decline jurisdiction until such time as the Complainant has obtained leave of the English High Court pursuant to Section 130(2) of the Insolvency Act, 1986.
6.B.3 Next, Explora say that because the Liquidator has issued the English High Court proceedings described in paragraph 5.7 above "the true legal relationship between the Complainant and the Respondent will be fully aired in those proceedings". Further, the issue of ownership of, inter alia, the domain name is already an issue between the Complainant and Explora and should be dealt with in contemplated further proceedings. In any event, the complex factual issues underlying ownership of the domain name are not suitable to be dealt with in this administrative proceeding under the Policy.
6.B.4 The Response then goes on to deal with the Complainantís contentions in the Complaint.
6.B.5 First, Explora say that the Complainant has no trademark rights in HESCO BASTION. The only registered trademark is CONCERTAINER. HESCO BASTION is only a company name.
6.B.6 Second, there can be no confusion arising from registration and use of the domain name in issue. As stated [see, paragraph 5.13 above], use by the Respondent of the HESCO BASTION name was "Ö with the full consent and approbation of the Complainant, as the jointly approved Handbook set out in Annex 1 hereof demonstrates".
6.B.7 Third, the "Ö Complainant was fully aware of the existence of the domain name during the course of its business relationship with the Respondent Ö". From this, if accepted, it would follow that before notice to the Respondent of this dispute, it had made use of the domain name in connection with a bona fide offering of the Complainantís products.
6.B.8 Fourth, because the Respondent has both rights and a legitimate interest in respect of the domain name in issue, it follows that it could not have been registered and used in bad faith. As to continuing use, Explora points to the sale of the Respondentís assets [including the domain name] to itself on April 30, 2002.
6.B.9 Fifth, in the alternative Explora say that HESCO BASTION "has become a description in common parlance in the trade, just like HOOVER became synonymous with vacuum cleaner".
7. Discussion and Findings
7.1 The Policy, paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in any administrative proceeding:
• That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
• That the Respondent has no rights or legitimate interests in respect of the domain name; and
• That the domain name has been registered and is being used in bad faith.
7.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondentís rights or legitimate interest in the domain name in issue.
7.3 The Policy, paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
7.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Jurisdiction of the Administrative Panel
7.5 The domain name in issue is registered in the name of The Trading Force. On the evidence before it, the Panel considers The Trading Force and the Respondent Limited company (now in liquidation) to be one and the same entity. The Response is contradictory in this respect. First, Explora says that the two are separate entities [Response, Section III paragraph 5.2(1)]. However, this is totally inconsistent with the Response where it relies on the transfer of the assets of the Respondent to Explora on April 30, 2002, as including ownership of the domain name. In this respect, the Panel refers to the extracts of correspondence from Mr. Le Carpentier and Mr. Carman to the Center and to the Response itself in Section III paragraph 5.2(2)(c), which extracts are set out in paragraph 5.11 above.
7.6 How then to approach Section 130(2) of the Insolvency Act, 1986? The Respondent company, The Trading Force Limited, when it registered the domain name in issue, entered into an Agreement with the domain name registrar, Network Solutions, Inc. That Agreement incorporated the Policy. Pursuant to Clause 21 of that Agreement the Respondent submitted to the jurisdiction of the US District Court for the Eastern District of Virginia, Alexandria Division. This is confirmed at point 4 of the Registrar verification received on November 12, 2002, [see, paragraph 3 above], which states that the Respondent submitted in its registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from use of the domain name.
7.7 Section 130(2) of the UK Insolvency Act 1986 in any event only covers "actions and proceedings" which require the assistance of the English High Court and not other extra judicial processes: see, Gore Brown on Companies at 34.4.1. This administrative proceeding is not an arbitration in respect of which the English High Court has jurisdiction. It is not taking place in England and Wales. Further, the Panelís Decision is not akin to an arbitration award which requires enforcement against the Respondent Company in liquidation at its new address in Leeds, United Kingdom. In the absence of a challenge before the appropriate Court, the Decision will be implemented by the Registrar.
7.8 In its Supplemental Submission of November 25, 2002, the Complainant also points out that if, as both the Liquidator and Explora contend, beneficial ownership of the domain name in issue was transferred to Explora on April 30, 2002, the Panelís Decision in this administrative proceeding is of no consequence to the Liquidator. It is because the Registrant of the domain name remains The Trading Force that the Complainant could only bring this Complaint under the Policy against the Respondent.
7.9 In all the circumstances, the Panel takes the view that it has jurisdiction over this dispute and that the Complainant did not first require leave of the English High Court to initiate this administrative proceeding.
The Effect of Court Proceedings
7.10 The Rules, paragraph 18, provide that in the event of any legal proceedings in respect of a domain name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a Decision. Explora urges the Panel to suspend or terminate: see, paragraph 6.B.3 above.
7.11 The only proceeding in existence between the parties to this Complaint is the English High Court action commenced on November 18, 2002. It is apparent from the relief sought by the Respondent in that action - see, paragraph 5.7 above - that the Court is not invited to rule upon ownership of or rights to the domain name in issue. The action is solely concerned with the taking of an account into commission allegedly due from the Complainant to the Respondent pursuant to the Agency arrangement between them, the precise terms of that Agency clearly being in dispute between those parties.
7.12 It follows, in the Panelsí view, that there is no legal proceeding between the parties in respect of the domain name dispute that is the subject of this Complaint. The Panel will not, therefore, suspend or terminate this administrative proceeding.
Admissibility of the Complainantís Supplemental Submission of November 25, 2002
7.13 This further statement was not requested by the Panel. However, the Panel is empowered to determine the admissibility of evidence. The Complainantís Supplementary Submission followed the Liquidator, Mr. Carmanís email to the Center dated November 20, 2002. [referred to in paragraphs 5.11 and 6.B.1. above]. The Submission deals with why Mr. Carman was named in the text of the Complaint as a joint-respondent; Mr. Carmanís submission as to the applicability of Section 130(2) of the UK Insolvency Act, 1986 the right of Explora to file a Response; and the fact that the only legal proceeding between the parties is the said High Court action commenced on November 18, 2002.
7.14 In the Panelís view, these are all matters upon which further submissions by the Complainant should be permitted given the somewhat exceptional circumstances of this case. The correspondence between Explora and the Complainant over the period June 12 to July 26, 2002, [exhibited as Annex #3 to the Response] does not relate to rights in the domain name in issue. It relates to the propriety of the Complainantís purported termination of the Agency arrangement with the Respondent and the Receiversí purported assignment of that Agency arrangement to Explora on April 30, 2002.
7.15 The matters addressed in the Supplemental Submission did not arise to be dealt with in the Complaint at the date it was filed [November 7, 2002]. The English High Court action was initiated subsequently [November 18, 2002] and the other matters are by way of clarification and in response to a communication from the Liquidator on November 20, 2002. The Supplemental Submission has not delayed the conduct of this administrative proceeding, nor has it lead to any inequality in relation to presentation of a Response by the Respondent and Explora. Accordingly, the Panel will now address the requirements of paragraph 4(a) of the Policy.
Identical or Confusingly Similar
7.16 The domain name in issue is identical with the HESCO BASTION trademark asserted by the Complainant. The question is whether HESCO BASTION is a trademark in which the Complainant has rights.
7.17 The Complainant does not assert registered trademark rights. Indeed, from the Panelís own research it is apparent that the Complainant filed an application with the UK Trademarks Registry to register HESCO BASTION in respect of goods within Classes 6 and 19 as late as December 2, 2002. This is UK Trademark Application No. 2,317,320.
7.18 The Complainant states that there is no one trading as HESCO for the Complainantís type of product: [see, paragraph 4.1.4 above]. This is confirmed by a United Kingdom and Community Trademark search made by the Panel. The search revealed UK registration B 1,025,881 dated March 1, 1974, for H.E.S.C.O. and device in Class 7 for conveyors registered by Handling Engineering Services and Conveyor Ltd. It also revealed H. HESCO, a CTM registration no. 943,050 dated September 19, 1998, in Classes 1: 6-7: 11: 16-17: 19: and 24 for filters in the name of Gebrüder Trox GmbH.
7.19 The Complainant provides no evidence of use of HESCO BASTION as a trademark other than as set out in paragraph 4.1.4 above. There are, for example, no illustrations of the way in which the trademark is used, the amount spent in advertising and promoting the trademark, clippings from relevant publications evidencing use of the mark and the like which are commonly advanced to indicate the existence of unregistered trademark rights. All we have is a figure for sales of the Complainantís gabion products over the past 5 years, which exceed US$50 million.
7.20 There is, however, evidence of the way that the Respondent marketed the Complainantís products in the form of the Handbook [Annex #1 to the Response]. Examples of use of the marks HESCO and CONCERTAINER taken from that Handbook are set out in paragraph 4.1.6 above. Further, the cover page of the Handbook reads:
Blast & Ballistic
Protective Barrier System
with the name HESCO BASTION in capitals and having prominence over the other lettering. Then on page 89 under the caption "Factory" the Complainant and its address are given. Otherwise, the products are identified by reference to HESCO and/or Hesco Concertainer.
7.21 There is also the Respondentís website at the domain name in issue [see, paragraphs 5.14 and 6.A.2 above] which is prominently entitled:
again with the name HESCO BASTION in capitals and in greater prominence. The web page also refers to:
"Protect and Survive Hesco Bastion Concertainer"
as being a product of the TFL Group of Companies [see, paragraph 5.14 above].
7.22 The Panel takes the view from the above evidence that HESCO BASTION, besides being the corporate identity of the Complainant, is also used as a trademark to identify the origin of the gabion products. Put another way, were a third party to make unauthorised use of the HESCO BASTION mark in relation to products of the same type, the Panel believes that the Complainant should have a reasonable cause of action to restrain such use in passing-off in English law or under unfair competition or similar laws in other jurisdictions.
7.23 There is no evidence whatsoever that the mark HESCO BASTION has become generic, as suggested by the Response in the alternative; see, paragraph 6.B.9 above.
7.24 On the evidence, the Panel concludes that HESCO BASTION is a trademark in which the Complainant has rights, that the domain name in issue is identical to that trademark and that, consequently, the Complainant succeeds in establishing the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interest
7.25 Here, there is a conflict of evidence. Explora say that the Complainant was fully aware of the existence of the domain name during the course of its business relationship with the Respondent and that use of the HESCO BASTION mark/name was with the full consent and approbation of the Complainant; see, paragraph 6.B.6. By contrast, the Complainant says that it never authorised such use. Further, the Complainant says it only became aware of the domain name in issue after appointment of the Receivers on April 10, 2002.
7.26 It is Exploraís case that from 1994 the Respondent marketed the Complainantís products under a commission arrangement: [see, paragraph 5.6 above]. So, these activities were carried on for some 7 years before the Respondent registered the domain name in issue in October 2001. This would tend to indicate that use of that domain name was not, at least for the greater part of the trading relationship between the parties, an essential component of the Respondentís marketing function or one which the Complainant tacitly accepted.
7.27 To the extent that the domain name in issue was used by the Respondent between October 8, 2001, and purported termination of the trading relationship by the Complainant in April, 2002, was such use in connection with a bona fide offering of the Complainantís products? The Complainant says that it was not for the simple reason that it never authorised registration and use by the Respondent.
7.28 As to whether fair use is being made of the domain name [paragraph 4(c)(iii) of the Policy], no use is being made of domain name by the Respondent. Explora, which is not and cannot be a Respondent to this administrative proceeding since it is not the registrant of the domain name, maintains that it acquired at least beneficial rights to the domain name by assignment on April 30, 2002.
7.29 Where, then, is the weight of the evidence in relation to the legitimacy of the Respondentís use of the domain name? The Complainant contends that its marketing/commission arrangement with the Respondent - which the Complainant describes as an informal "Agency" - was not exclusive and that the Complainant retained the rights to market and sell its own products alongside the Respondent and to employ other agents to do so: see, paragraph 5.13 above. Further, nowhere in the Respondentís Particulars of Claim [Annex #3 to the Response], where the express terms of its Contract with the Complainant are pleaded, is there any mention of an exclusive arrangement.
7.30 It would, in the Panelís opinion, be inconsistent for a non-exclusive marketing agent to be authorised to register exclusive rights to the manufacturerís trademark in the form of a domain name, still less to permit sale of that domain name to a third party [here, Explora] after purported termination of the agency arrangement. Further, the Response does not deny that the Complainant retained rights to market and to employ other agents to market its products, and that the Complainant continued to sell the gabion product itself throughout the period of the agency.
7.31 The Complainant complains of misuse of its trademarks, CONCERTAINER, HESCO and HESCO BASTION in the website to which the domain name resolves. The Response contends that the Handbook [Annex #3 to the Response] was jointly approved between the parties, which is indicative of the Complainantís consent to use by the Respondent of the HESCO BASTION name. The Complainant does not refer to the Handbook. However, use of the HESCO and CONCERTAINER trademarks in the Handbook is not, in the Panelís opinion, consistent with use of the type expected by a trademark owner of its authorised licensee. Consent to or approbation of such use by the Complainant trademark owner is therefore, in the Panelís view, unlikely.
7.32 On the evidence before it, the Panel is not convinced that registration and use of the HESCO BASTION name/mark as a domain name was authorised by the Complainant. Accordingly, the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
7.33 Given the Panelís finding in relation to rights or legitimate interests, it follows that registration of the domain name in issue could not have been made in good faith.
7.34 Is the domain name being used in good faith? It is not being used by the registrant, the Respondent, but by Explora [a third party]. There is no evidence that the Complainant has authorised such use. The reverse is the case. The Complainant purported to terminate the agency arrangement with the Respondent when it became aware of the appointment of Receivers on April 10, 2002. Further, the Complainant did not authorise - indeed, protests against - purported assignment of the domain name by the Receivers to Explora on April 30, 2002.
7.35 The Complainant also relies on paragraph 4(b)(iv) of the Policy: see, paragraph 6.A.3 at the third indent. The Panel agrees that the website to which the domain name resolves has "the look and feel of a website which a reasonable person would conclude originates from - or at the very least has been created with the knowledge and blessing of - the ComplainantÖ."
7.36 In the circumstances, the Panel finds that the Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hescobastion.com>, be transferred to the Complainant.
Dated: December 31, 2002