WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hesco Bastion Limited v. Qiao Shi
Case No. D2013-2148
1. The Parties
The Complainant is Hesco Bastion Limited of West Yorkshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Collyer Bristow LLP, UK.
The Respondent is Qiao Shi of Shijiazhuang, Hebei, China.
2. The Domain Names and Registrar
The disputed domain names <hescobastion.org> and <hesco.org> are registered with GoDaddy.com, LLC
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on December 17, 2013 providing the registrant name disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2013.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Center received email communications from the Respondent on December 19, 2013. On the same date, the Center acknowledged receipt of the Respondent’s email communications and informed the parties that all communications received would be forwarded to the Panel for its consideration. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on January 9, 2014.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 16, 2014. 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 Background
The Complainant is a company incorporated in the UK which since 1991 has designed, constructed and marketed gabions. These are collapsible cage-like structures which can be easily transported, stored and erected using a unique coil and hinge joining-system.
The Complainant’s gabions are marketed and used worldwide for a variety of civil engineering, environmental and military purposes such as protective walls. Since 1998 total worldwide sales of the gabions are in excess of GBP 1 billion. The Complainant has traded is products under the trademarks HESCO and HESCO BASTION since its incorporation in 1990. In 2002, it filed a Community Trademark Application for the trademark HESCO BASTION. Since then, the Complainant has applied to register the trademark HESCO in virtually every country in the world where trademark registrations are allowed. The evidence submitted by the Complainant shows that the Complainant has acquired a considerable reputation in many countries for its products.
On a website accessed by either of the disputed domain names, the Respondent is offering for sale products under the Complainant’s trademarked names. The website refers, inter alia to a) “10 years of good reputation” even although another part of the website states that the Respondent was founded in 2007: b) “international famous brand”, which can only refer to the Complainant’s brand; and c) “independent design, development and production” which cannot be true since the product was designed and developed by the founder of the Complainant in 1990.
The Complainant gave the Respondent no authority of any kind to reflect its trademarks in the disputed domain names.
The disputed domain name <hescobastion.org> was registered on December 28, 2011 and the disputed domain name <hesco.org> was registered on April 5, 2013.
5. Parties’ Contentions
The disputed domain names are identical to the Complainant’s trademarks. The Complainant gave the Respondent no authority to reflect its trademarks in the disputed domain names. None of the situations in Paragraph 4(c) of the Policy applies to the Respondent. The disputed domain names were registered and are being used in bad faith.
The Respondent is using the Complainant’s trademarks in its website to sell what are represented to be the Complainant’s products which they are not, since they have not been made under any licence or authority from the Complainant.
The registration and use of the disputed domain names was and are in bad faith and fraudulent. The Respondent by using the disputed domain names has intentionally intended to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship and affiliation or endorsement of the Respondent’s website and to disrupt the Complainant’s business.
The Respondent is misleading Internet users as to the origin of the products sold and the legitimacy of its business. The representations under the heading “Hesco Bastion” are demonstrably untrue.
The Complainant has commenced court proceedings in China against the Respondent for infringement of the Complaint’s trademarks.
On December 19, 2013, the Center received email communications from the Respondent.
The Panel notes that the Respondent alleges to have a patent and attaches a Chinese language document as evidence without translation thereof. While the Panel could request further statements, including a translation, regarding the existence of the alleged patent, the Panel need not make a determination on such in light of the available record and findings under Section 6 below.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following 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 domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names are both identical to trademarks in which the Complainant has rights.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to reflect its trademarks in the disputed domain names.
In the absence of any formal Response from the Respondent, that fact is sufficient to satisfy paragraph 4(b) (ii) of the Policy. The Respondent could have produced evidence that showed that the Respondent came within one or other of the situations envisaged by paragraph 4(c) of the Policy and thus could have established its defence to the allegation that the Respondent had no interests or legitimate rights in the disputed domain names. However, the Respondent has chosen not to file a formal Response.
Furthermore, as stated in Section 5. B. above, even though the Respondent alleges to have a patent, the present circumstances indicate the lack of good faith on the part of the Respondent in its selection of the disputed domain names which incorporate the Complainant’s trademarks.
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
In the Panel’s assessment, this is a blatant example of somebody unlawfully using the Internet to pirate goods produced and marketed by a trademark owner with an international reputation.
Clearly the Respondent must have known of the form of the Complainant’s trademark and products before registering the disputed domain names. The Complainant’s trademarks go back to 2002 and for some 11 years prior to that the Complainant would have had a common law trademark.
The Respondent is clearly attempting to “cash in” on the Complainant’s reputation as a manufacturer of a specialised engineering product. The Respondent is confusing Internet users into thinking that the Respondent has some connection with or authorisation from the Complainant.
All the submissions of the Complainant under this heading are clearly demonstrated by the Respondent’s naked attempt at pirating the Complainant’s products.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names<hescobastion.org> and <hesco.org> be transferred to the Complainant.
Sir Ian Barker
Date: January 28, 2014