Complainant is RigCool Australia Pty Limited of Henderson, Western Australia, Australia, represented by Middletons Lawyers, Australia.
Respondent is Optima Solutions UK Limited, Kevin Mathieson, of Perth, Western Australia, represented by Freehills, Australia.
The disputed domain names <rigcool.com.au>, <rigcooling.com.au> and <rigcoolltd.com.au> are registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 12, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On March 18, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2010. The Response was filed with the Center on April 12, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on April 15, 2010. 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.
The disputed domain names were first registered on October 2, 2007.
Complainant is an Australian company incorporated on October 17, 2007. It is a sister company of RigCool Limited (“RigCool UK”), a United Kingdom of Great Britain and Northern Ireland company incorporated on November 3, 2006. The companies have a common majority shareholder and other common shareholders and directors. Respondent is a company incorporated in the United Kingdom on March 31, 1999. It was registered as an Australian registered body on May 8, 2008. Complainant and Respondent each operate as suppliers of goods and services to the oil and gas industry, and in particular, the supply of heat shielding equipment to shield drilling rigs from heat generated by flares. They both operate in competition in Australia and in international markets. Respondent and RigCool UK both have their operating headquarters in Scotland. RigCool UK operated in the Australian market through a representative prior to the formation of Complainant.
Respondent is the applicant for registration of Australian trademark No. 1219762, RIGCOOLING, filed January 17, 2008 in respect of services in classes 35 and 37. That application has been accepted and has been opposed by Complainant.
The disputed domain names were registered on October 2, 2007 in the name of Western Waters Plumbing and Gas Pty Ltd. Complainant asserts that the registrations were made for its benefit, as it had not at that stage been incorporated. From October 2007 until June 2009 the disputed domain names pointed to Complainant's website at “www.rigcooling.com.au”.
On October 4, 2007 Western Waters Plumbing and Gas Pty Ltd went into liquidation. On June 22, 2009 the disputed domain names were transferred by the liquidator to Respondent. Complainant then registered the domain name <rigcoolingaustralia.com.au> and redirected its website to that domain name.
Complainant asserts, and provides documentary evidence to show, that it has extensively used and promoted the trade mark RIGCOOL in relation to its goods and services, and contends that it has thereby established common law rights in that trademark. Complainant further asserts that it has established common law trademark rights in <rigcooling.com.au> by virtue of its use and promotion of that domain name in the course of promotion of its goods and services.
Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain names. It says that Respondent is not commonly known as RigCool and that it disputes Respondent's rights to the trademark RIGCOOLING and has opposed Respondent's application for registration of that mark.
Complainant contends that the disputed domain names have been registered and are being used in bad faith. Complainant asserts that having regard to the small number of operators in the industry and the fact that Complainant and Respondent are the only two companies providing the relevant services to the oil and gas industry in Australia, Respondent must have had actual knowledge of Complainant's rights in relation to the disputed domain names when it acquired them from the liquidator. Complainant further asserts that since acquisition of the disputed domain names, Respondent has used them in bad faith by using them to direct Internet users to Respondent's own website, to disrupt the business of Complainant and to create a likelihood of confusion in the minds of Internet users for commercial gain.
Respondent asserts that it provides a range of engineering solutions for oil companies and drill rig operators and has used the trademark RIGCOOL in connection with its operations since it began trading in July 2000. It claims to have generated revenue using the RIGCOOL trademark of the order of £34 million of which of the order of 6 million Australian Dollars is attributable to its Australian operations. It claims to be the owner of the trademark RIGCOOLING which is the subject of Australian trademark application No. 1219762 referred to above, and which has been opposed by Complainant. Respondent is the owner of the domain name <www.rigcooling.com> created October 6, 2000, and www.rigcooling.co.uk> created April 29, 2002. It also claims to be the owner of registrations of domain names comprising the words “rig-cool”, “rigcool-ltd”, and “rigcoolltd” in the dot com, dot net. dot org. dot uk.com and dot co.uk domains, dating from November 8, 2006 and November 13, 2006.
Respondent asserts that it is the owner of the RIGCOOL trademark, created by it in 2000 and extensively used by it since then. It asserts that Complainant has no rights or legitimate interests in the disputed domain names and that it registered them and has used them in bad faith in the period from October 2007 to June 2009. Respondent further asserts that one Mr. I. Garden, a Field Engineer employed by Respondent from February 2003 to November 2006, and now a director and shareholder of Complainant was guilty of breach of contract and breach of the fiduciary duty in relation to the establishment of Complainant and RigCool UK. Respondent claims to have initiated proceedings against Mr Garden and Complainant in Scotland to recover documents which now form the basis of proceedings between the parties in Scotland. Respondent exhibits what it claims to be a copy of the Pleading in those proceedings as they currently stand in respect of claims for patent and copyright infringement.
Respondent shows that shortly before it acquired the disputed domain names it had caused its legal advisers to prepare an auDRP Complaint for the purpose of having the disputed domain names transferred to it. The Complaint was not filed when Respondent acquired the disputed domain names from the liquidator.
Each party has claimed rights in the trademark RIGCOOL. Evidentiary material attached to Complaint shows extensive use by Complainant of the trademark RIGCOOL and corresponding material attached to the Response show extensive use by Respondent of the trademark RIGCOOLING. In the light of its findings under paragraph 6.B of this decision, the Panel considers it unnecessary to make a finding in respect of the rights of either party in relation to the trademarks RIGCOOL or RIGCOOLING.
Respondent claims to have used the trademark RIGCOOL and to have established rights in it from a time well prior to the incorporation of Complainant. Whilst the documentary evidence attached to the Response does not support Respondent's claim to have used the trademark RIGCOOL, it does clearly support its claim to such prior use of the similar mark RIGCOOLING. Further, since well prior to Complainant's incorporation, Respondent owned a number of domain names consisting of the word “rigcool” or variations of it, and has used those domain names to direct Internet users to its principal website. Further, Respondent not only asserts a claim to rights and interests in the disputed domain names but further contests Complainant's rights or legitimate interests in those domain names. This is therefore matter in which each party asserts conflicting rights and interests and in respect of which each party has produced a prima facie case in support of its claim. A resolution of those claims would involve deep investigation, and calling of witnesses and the cross-examination and testing of the credibility of such witnesses, a matter which is beyond the scope and capability of proceedings under the auDRP.
In these proceedings the burden of proof lies with Complainant, subject to this, that in relation to paragraph 4(a)(ii) of the Policy, the burden is a shifting burden which moves to Respondent upon the making of a prima facie showing by Complainant. Respondent has accepted that burden by providing evidence of its prior adoption of the trademark RIGCOOLING and its adoption of domain names with the word “rigcool” and variations of it prior to the incorporation of Complainant and prior to the establishment of any reputation in the words “RigCool” by RigCool UK. In the opinion of the Panel based on the present record Respondent has established legitimate interests in each of the disputed domain names.
The Panel finds therefore that Complainant has failed to show that Respondent has no rights or legitimate interests in the disputed domain names.
In order to succeed in these proceedings it is necessary for a Complainant to meet all three requirements of paragraph 4(a) of the Policy. Accordingly, in the light of the Panel's findings in respect of paragraph 4(a)(ii) of the Policy, it is unnecessary to address the requirement under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Dated: April 29, 2010