WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlueScope Steel Limited v. Ronald Leslie Mann (Ron Mann), Gram Engineering Pty Ltd.
Case No. D2016-0969
1. The Parties
The Complainant is BlueScope Steel Limited of Melbourne, Australia, represented by Baker & McKenzie, Australia.
The Respondent is Ronald Leslie Mann (Ron Mann), Gram Engineering Pty Ltd. of Australia, self-represented.
2. The Domain Names and Registrars
The disputed domain name <colorbondfencing.com> (the "first disputed domain name") is registered with Tucows Inc. and the disputed domain name <colorbondproducts.com> (the "second disputed domain name") is registered with Network Solutions, LLC (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 17, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on May 25, 2016.
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 May 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2016. The Response was timely filed with the Center on June 16, 2016, but due to technical issues, the Response was resubmitted on June 17, 2016, and on June 20, 2016. The Complainant filed an unsolicited supplemental filing on June 27, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 30, 2016. 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 manufactures and sells steel and products made from steel. It was formerly a division of BHP Billiton Limited, operating under the name John Lysaght (Australia) Pty Ltd and BHP Steel. Part of the Complainant's product range includes roofing and fencing panels made from flat steel sheeting with a painted coating. It markets these products by reference to the name COLORBOND. Since 1966, it has produced approximately six million tonnes of its COLORBOND steel. Sales of its COLORBOND products between 1998 and 2002 exceeded AUD 2.5 billion. According to the Complaint, nearly half of all new Australian homes have roofs made with COLORBOND steel, nine out of 10 include products made from COLORBOND steel and over 80 per cent of all Australian gutters and fascias are made from COLORBOND steel.
Amongst other things, the Complainant promotes the sale of its COLORBOND products from a website at <colorbond.com>.
The Complainant has four trademarks registered in Australia:
- Trademark No. 312434 COLORBOND, registered from October 19, 1977 in International Class 6 in respect of "pre-coated metal sheet, coils and strips, pre-coated steel building materials including wall sheeting and roofing, guttering and ceiling panels";
- Trademark No. 348343, COLORBOND, registered from July 10, 1980 in International Class 6 in respect of "pre-coated metal sheet, coils and strips, pre-coated steel building materials including wall sheeting and roofing, guttering and ceiling panels";
- Trademark No. 1009408, COLORBOND, registered from July 2, 2004 in International Class 6 in respect of "Common metals and their alloys; metal in the form of sheets, coils, strips, plates, bars, rods, slabs and ingots; precoated metal sheets, coils and strips including prepainted metal sheets, coils and strips; metal building materials including guttering and ceiling panels; metal roof and wall cladding, metal roof and floor decking; water tanks of metal; water pipes of metal; water valves of metal; metal rainwater products including guttering and downpipes; metal fencing materials including metal posts, fencing frames and panels; facias, guttering, ridge capping, metal channels, metal angles; bolts, screws, rivets, nails, brackets, clips and clamps, all of metal"; and
- Trademark No. 1079206, COLORBOND, which is a defensive trademark registered from October 5, 2005 for a wide range of goods and services in International Classes 1, 2, 6, 16, 17, 19, 35, 37, 39, 40 and 42.
The First Respondent Ronald Leslie Mann is the sole director and shareholder of the Second Respondent Gram Engineering Pty Limited (collectively "Respondents"). Since 1975, the Second Respondent has been designing, manufacturing and supplying steel fencing products. From 1984 until about 2008, the Second Respondent used COLORBOND steel products supplied by the Complainant for its products. So far as the record discloses, there were periods during this relationship where the Second Respondent sourced its pre-coated steel requirements, at least in part, from sources other than the Complainant. There appear to be other periods where the Complainant was the Second Respondent's exclusive supplier.
In 1994, the Second Respondent developed a new design of steel fencing panel which used a sawtooth pattern and was symmetrical and so looked the same from both sides of the fence. The Second Respondent registered this new design under Australia's Designs Act. In time, the Second Respondent's design supplanted the Complainant's competing fence panel design as the best-selling steel fencing panel in Australia.
It appears that between 1996 and 1999, the Second Respondent obtained some 20 per cent of its fencing requirements from imports (i.e., sources other than the Complainant). At the end of that period, however, the Second Respondent resumed obtaining all of its requirements from the Complainant.1 In 2003, the Complainant awarded the Second Respondent a plaque marking the purchase by the Second Respondent of 100,000 tonnes of COLORBOND steel from the Complainant since 1992 and recognizing the "valuable contribution of [the Second Respondent] in helping to grow the COLORBOND ® steel market in Australia". The Complainant also acknowledged the achievement on its website.
In 2002, the Complainant launched its own sawtooth, symmetrical fencing panel design to compete with the Second Respondent's product. Ultimately, this led to litigation between the Parties, not commenced until 2011, with the Complainant being held to have infringed the Second Respondent's registered design. That litigation is apparently continuing over the question of pecuniary remedies.
Although the litigation was not commenced until 2011, the relationship between the Parties clearly began to deteriorate at least by 2005. In 2005, there was correspondence between the Parties. According to the Complainant's unsolicited Supplemental Filing, there was a meeting between the Parties on November 9, 2005 in which the Complainant says agreement was reached about some matters in dispute. These matters included resolution of outstanding demands for supply of steel and the Second Respondent's agreement not to use at the least the first disputed domain name and not to challenge the validity or distinctiveness of the Complainant's trademark. The Respondents have not contested the accuracy of these claims.
There was further correspondence in 2007 and 2008. In this correspondence, the Complainant objected to the Respondents' use and registration of the disputed domain names, a 1-800 telephone number based on COLORBOND and comments made by the Second Respondent on its main website claiming that COLORBOND was a generic term. For their part, the Respondents were pressing for some form of renewed supply arrangements and resisted surrender of the telephone number and the disputed domain names. At some point after receiving letters from the Complainant's then lawyers, however, the disputed domain names ceased to resolve to any website.
The verification information from the Registrar states that the second disputed domain name was created on August 5, 2002. The Respondents state, however, that both disputed domain names were registered in 1999. In support of that claim, they have presented a WhoIs printout from Domain Tools which shows that the first disputed domain name was registered on August 9, 1999. There is no similar record for the second disputed domain name.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a 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;
(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. The Complainant's Unsolicited Supplemental Filing
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant's supplemental filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The Respondents have not objected to the admission into the record of the Supplemental Filing which, amongst other things, includes a letter sent on the Respondents' behalf by their solicitors in November 2005. The Panel will admit the Supplemental Filing into the record in this proceeding largely because the additional correspondence included allows a more complete picture of the dealings between the Parties.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks in Australia for identified in section 4 above.
Disregarding the ".com" gTLD as simply a functional requirement of the domain name system, the disputed domain names differ from the Complainant's trademark by the addition of a descriptive term – "fencing" in the case of the first disputed domain name and "products" in the case of the second disputed domain name. The addition of such descriptive terms to the Complainant's trademark does nothing to dispel the striking visual and aural resemblance of both disputed domain names to the Complainant's trademark.
The Respondents argue that the Complainant's trademarks did not extend to fencing products until the registration of Trademark No. 1009408 in 2004 – well after the disputed domain names were registered. The Respondents also contend that the word COLORBOND is a generic term in common use to mean coated steel products. Both arguments are misconceived.
The Respondents' first argument is not relevant under this stage of the Policy, which simply requires a visual and aural comparison of the disputed domain name to the proven trademarks: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective Parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. It is also wrong as a matter of fact. The Complainant's registrations Nos. 312434 and 348343 both specify pre-coated steel building materials including wall sheeting and roofing, guttering and ceiling panels which would appear to cover the Respondents' products precisely.
The argument that the Complainant's trademark is a generic term is not supportable. The term COLORBOND is not an ordinary English word. The evidence advanced by the Respondents to support their claim falls well short of showing its widespread use and acceptance as a term to mean any kind of pre-coated steel, regardless of source, such as would be required to invalidate the registrations under, for example, section 24 of the Trade Marks Act 1995. The Respondents themselves appear to use the term "COLORSEALED" to refer to the competing product which they now use.
Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is convenient to deal with the third requirement under the Policy next. Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been registered and used in bad faith by the Respondent: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470 and Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716.
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 illegitimately of its significance as a trademark owned by (usually) the complainant.
In the present case, there can be no doubt that the Respondents were well aware of the Complainant's trademark before they registered the disputed domain names. They had been dealing with the Complainant and using its Colorbond-branded products for at least 14 years before the disputed domain names were registered.
The Respondents' use of the disputed domain names to redirect to the Second Respondent's website at <www.gram.com.au> after the Second Respondent ceased to use the Complainant's Colorbond steel is conduct which has been consistently found under the Policy to constitute use in bad faith. An early example is Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756. There are many other examples.
The question of registration in bad faith, however, requires an examination of the Respondents' motives at the time they registered the disputed domain names.
Neither party has submitted a printout of the Second Respondent's website in the form it took shortly after the disputed domain names were registered.
The Complainant states that it has not at any time authorised the Respondents to register either of the disputed domain names or to use its trademark in any domain name. The Complainant says that, as the Respondents knew of the Complainant's trademark and the strength of the Complainant's reputation in its trademark in the marketplace, the Respondents could only have registered the disputed domain name with the intention of misappropriating the Complainant's rights or taking advantage of the Complainant's reputation to misdirect consumers to the Second Respondent's website. The Complainant also points to what it says are misuses of its trademark on the Second Respondent's website to support a finding of bad faith.
Taking the alleged misuses first, it is not clear from the record when they occurred. The evidence for the Complainant's allegations are letters sent in 2007, 2008 and 2009 which refer to a settlement agreement reached in 2005. It also appears from the record that by 2005, the Respondents were asserting in correspondence with the Complainant that the Complainant's trademark was a generic term. Earlier, in 2002, however, it appears that the Respondent was promoting its products with some form of "Authenticity Certificate" to promote the use of genuine Colorbond fencing.2 The form of the website at that time is not in evidence, but it seems unlikely that the Second Respondent would have been deliberately undermining the trademark at the same time as it was apparently actively promoting it as an important distinguishing factor through its "innovative ['Authenticity Certificate'] marketing" program "to protect and promote COLORBOND ® Fencing." In these circumstances, it appears that the alleged misuses occurred when the relationship between the Parties was breaking down, well after the disputed domain names were registered. On the record in this proceeding, therefore, they do not throw any light on whether the disputed domain names were registered in bad faith.
Turning to the allegation of misappropriation / misdirection, the Respondents claim that the disputed domain names were registered in the belief that the Parties were "in 'partnership' in the manufacture and supply of fencing materials made from 'colorbond steel'". Further, the Respondents claim that the registrations were made with the full knowledge of the Complainant.
The Respondents' claim that they registered and used the disputed domain names with the knowledge of the Complainant directly contradicts the Complainant's express denial that it authorised the Respondents to register either disputed domain name.
The Respondents do not point to any express authorization from the Complainant. Rather, they rely on a number of indirect inferences. First, the Respondents point to a PowerPoint presentation dated August 6, 2002 which they say the Complainant prepared. It is not clear how this document was used. For example, it is not clear whether it was presented to the Respondents, to third parties, or just used internally. In some respects, it reads as if it was some sort of internal business case. The PowerPoint presentation does bear the logos of both the Complainant (in its then guise as BHP Steel) and the Second Respondent and a stylized version of the COLORBOND trademark. It recites some of the history of the two Parties' dealings, but refers to a cross-roads in the relationship being reached and canvasses possible future outcomes, recommending the Parties proceed with a "virtual partnership". Amongst other things, the PowerPoint presentation states:
"[In] 2001 [the Second Respondent] developed innovative marketing programs-'Authenticity Certificate' for the industry that forces customers to decide which side of the fence they are on IMPORTS or 100% loyal. This was a Gram lead initiative to protect & promote COLORBOND ® Fencing."
"[The Second Respondent] acts as a Subsidiary of BHP promoting only BHP Steel Brands and Trademarks".
It is clear, therefore, that the Complainant knew that the Second Respondent was using the Colorbond trademark in some fashion at that point. This evidence does not establish, however, that the Complainant knew of the registration of the disputed domain names in particular, their re-direction to the Second Respondent's website or that Complainant acquiesced in those matters.
The same can be said about the acknowledgement or award in 2003 for the Second Respondent's achievement in buying 100,000 tonnes of Colorbond steel from the Complainant thereby recognizing "the valuable contribution of [the Second Respondent] in helping to grow the COLORBOND® steel market in Australia".
Similarly, the Panel is not willing to infer permission to register the disputed domain names from the fact that they had not been registered by the Complainant and were available to be registered by the public at large when the Respondents did register them. The number of possible disputed domain names that could be registered based on the Complainant's trademark are virtually limitless. The Complainant cannot be expected to register all possible variations or be taken to have consented to anyone else registering any which it does not.
What does appear from the record, however, is that the Respondents registered the disputed domain names at or about the time in 1999 (or possibly 2002 in the case of the second disputed domain name) when the Second Respondent had either resumed sourcing, or had arranged to source, all its requirements for pre-coated steel from the Complainant's COLORBOND product. So far as the record in this proceeding shows, therefore, it does not appear that the Respondents registered the disputed domain names to divert customers from the Complainant or otherwise to misappropriate the Complainant's goodwill, but rather to promote the fact that it was at that time selling products using genuine COLORBOND metal sheeting. Many of the decisions where it has been held that registration in bad faith has not been established, even where there has been use in bad faith, do involve situations where the complainant has authorised the respondent to register the domain name in question, but there has been a subsequent falling out or other change in relationship. An example is SPECS Surface Nano Analysis GmbH v. Rickmer Kose / Domain Name Administrator, PrivacyProtect.org, WIPO Case No. D2010-1173. However, that is not always the case. The same approach has been often been extended to situations where there was no such authorization or permission: see e.g., Miele, Inc. v. Absolute Air Cleaners and Purifiers, supra, and in the case of an unauthorized reseller, cases such as Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments Inc., WIPO Case No. D2008-0936, and IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725. Further, the Panel is mindful of the fact that section 123(1) of the Trade Marks Act 1995 provides that it is not an infringement of a registered trademark in Australia to use the trademark in relation to goods to which the trademark has been applied by, or with the consent of, the trademark owner. While the Policy is not governed by national law as it lays down norms of conduct across international borders, the potential availability of the defence under Australian law has relevance where much, if not all, of the Second Respondent's business was directed to the residential housing market in Australia.
In these circumstances, the Panel is unable to accept the Complainant's contention that the disputed domain names were registered in bad faith. Accordingly, the Complaint must fail.
D. Rights or Legitimate Interests
As the Complaint cannot succeed and the Parties may well pursue their dispute in other Fora, no good purpose would be served by addressing whether the Respondents have rights or legitimate interests under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: July 6, 2016
1 According to a PowerPoint presentation provided with the Response, and dated August 6, 2002, which the Respondents say was prepared by the Complainant.
2 The "Authenticity Certificate" program is identified in the Complainant's PowerPoint presentation discussed further below.