WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rhino Linings USA, Inc. v. Rhino Linings South Africa

Case No. DBIZ2002-00002

1.1 The Complainant is Rhino Linings USA, Inc. of 9151 Rehco Road, San Diego, CA 92121, United States of America.

1.2 The Respondent is Rhino Linings International (pty) Ltd. of 1 Rhino Industrial Park, 63 Plantation Road, Eastleigh, 1609, South Africa.

The domain name upon which this Complaint is based is <rhinolinings.biz> ("Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is Register.com of New York, NY 10018, United States of America ("Registrar").

3.1 The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") via e-mail on January 19, 2002, and in hard copy on January 25, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.

3.3 The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP rules) on February 5, 2002, to the Respondent via e-mail (without attachments) and on February 6, 2002, by post/courier (with enclosures), and to the Complainant’s representative via e-mail with attachments. The Center sent a copy of the Complaint (without attachments) on February 5, 2002, to the ICANN and the Registrar.

3.4 The Respondent filed a Response on February 6, 2002.

3.5 An Acknowledgment of Receipt of Response was sent by the Center to the Respondent and the Complainant via e-mail on February 20, 2002. The parties were notified in the Acknowledgment of Receipt of Response that the Center would proceed to appoint the Administrative Panel

3.6 Pursuant to Paragraph 6(c) of the STOP Rules, the Center notified the Complainant and Respondent on March 18, 2002, via e-mail of the appointment of the Administrative Panel and that, pursuant to Paragraph 7 of the STOP Rules, the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

3.7 The Center sent a Transmission of Case File to the Panel by e-mail on March 18, 2002. The documentation was received in hard copy by the Panel in Sydney, Australia, on March 28, 2002.

3.8 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Center’s assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

3.9 All other procedural requirements appear to have been satisfied.

3.10 On March 20, 2002, the Panel received a reply to the Response from the Complainant ("Reply") via e-mail. On March 21, 2002, the Panel received the Reply via e-mail from the Center.

3.11 On March 27, 2002, the Panel received via e-mail from the Center a sur-reply prepared by the Respondent.

The Complainant does not assert any information about itself in the Complaint.

Pursuant to Paragraph 10 of the STOP Rules the Panel has examined the website used by the Complainant – "www.rhinolinings.com." The Panel has thereby seen Complainant’s claim that "Rhino Linings is the worldwide leader in sprayed-on polyurethane linings for truck beds, trailers and specialized applications".

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant states that it is registered in the United States of America as the proprietor of, and has legal rights in, the trademarks:

·"RHINO LININGS" (registration number 1910469; registration date August 8, 1995); and

·"RHINO LININGS" (serial number 76/008496; application date March 23, 2000).

The Complaint does not provide details of use by Complainant of the trademarks "RHINO LININGS". The 1910469 mark is registered and the 76/008496 application is prospectively, for goods and services which involve, amongst other things, the application of polyurethane coatings.

The Respondent asserts in the Response that:

·in 1983, Morgan Evans ("Evans") founded the company "Rhino Linings". It traded as Rhino Cote until 1986, at which time it changed its name to Rhino Linings;

·in 1988, a licence to distribute Rhino Linings products was granted to a company doing business in the British Virgin Islands ("Company"). The Company was owned by Evans and Russell Lewis, the president of the Complainant;

·in 1988, the Company founded Rhino Linings USA, Inc. and granted a licence to Rhino Linings USA, Inc to distribute products only in the United States of America. The licence agreement terminated no later than 1991.

Pursuant to Paragraph 10 of the STOP Rules the Panel has examined the website used by the Respondent: "www.rhinolinings.co.za" and ascertained that it is asserted there that the Respondent has "almost two decades of experience in the Spray-on bed liner industry".

The Respondent asserts that:

·since 1986, it has been trading using the "Rhino Linings" mark and it has sold "hundreds of dealerships worldwide including the UK, USA, Canada, Europe, Middle East, Africa, Australia and the Caribbean";

·prior to the founding of the Complainant in 1988, the Respondent had used and obtained rights to the mark "Rhino Linings".

·the Respondent has used and is promoting the mark "Rhino Linings" vigorously worldwide.

The Complainant and the Respondent refer to and quote from an award given by the International Court of Arbitration in respect of proceedings to which they were both parties. The final award was dated November 9, 2001, and rendered by arbitrator David St John Sutton ("Award"). Amongst other things, the Award states that a permanent order should be made against the Respondent restraining it from infringing the Complainant’s "Rhino Linings" marks "whether such infringement occurs inside or outside the USA and from interfering in the Complainant’s business in the USA."

Apart from Paragraph 8.1 of the Award in which it is stated that the arbitrator accepts "Evan’s evidence that the name "Rhino Linings" was used by Evans and Rhino International in connection with their business in South Africa since before 1988", the Award does not affect the Panel’s decision.

5.1 The Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP have been satisfied.

5.2 The Complainant asserts that it is the registered proprietor of each of the trademarks "Rhino Linings" (registration number 1910469) and "Rhino Linings" (application number 76/008496).

5.3 The Complainant asserts that, pursuant to the Award, the Respondent has no rights or legitimate interests in the use or registration of the "Rhino Linings" name in the United States or any other country "outside of South Africa".

5.4 The Complainant asserts that the Respondent has registered the Disputed Domain, or is using it in bad faith and in defiance of the Award. The Complainant asserts that the Award states "Morgan Evans, whether by himself or through agents, be enjoined and restrained until further award from interfering with or otherwise challenging or claiming rights to Claimants [Rhino Linings USA] business or business relationships".

5.5 In the Reply the Complainant, amongst other things, requests that the Panel make its decision about the Disputed Domain "consistent with, and solely based upon the ICC award". The Complainant asserts that if the Panel is unable to do so then the decision should be referred back to the International Court of Arbitration for resolution.

The Respondent states that it does not deny the Disputed Domain is identical to the Complainant’s trademark.

The Respondent asserts:

·its belief that "the Complainant has no enforceable rights to the "Rhino Linings" mark, registered or not, outside of the USA";

·it has been trading using the Rhino Linings mark since 1986, and that it has "sold hundreds of dealerships worldwide including the UK, USA, Canada, Europe, Middle East, Africa, Australia and the Caribbean";

·that before 1988, it had used and obtained rights to the mark "Rhino Linings". It asserts that 1988, was "the founding date of the Complainant";

·it "has promoted and is promoting the mark vigorously worldwide in line with the arbitration award and the arbitrator’s findings";

·the Complainant acknowledges the Respondent’s right to the "Rhino Linings" mark in South Africa at Paragraph 13(ii) of the Complaint;

·the Complainant has not shown that the registration of the Disputed Domain by the Respondent "was done in bad faith".

In the sur-reply the Respondent requests that the Panel not refer the decision about the Disputed Domain back to the International Court of Arbitration.

Paragraph 12 of the STOP Rules provides that in addition to the Complaint and the Response, the Panel may request, in its sole discretion further statements or documents from either of the Parties. The Panel has made no such request. This Panel is, however, prepared to consider supplementary submissions on those rare instances where it can be demonstrated that material information has come to light subsequent to a party’s prior submission, or that an issue is raised by a party that the other party could not reasonably have anticipated. Since neither of the submitted Reply or Sur-Reply satisfy these tests, they are rejected as inadmissible. Accordingly, apart from the reference to each of the parties’ websites as noted above, and to the Award, the Panel’s decision is based solely on the information in the Complaint and the Response. Whilst this Panel also relies upon Paragraph 10 of STOP Rules to enable the Panel to inform itself by reference to publicly available material that appears relevant, it will ordinarily only do so by way of verification or authentication of assertions made by a party, given that evidence before a Panel is untested in the way that would be likely in conventional litigation. Most usually, this Panel will rely upon a party’s current or any former version of its website

This section is structured by reference to the elements required by Paragraph 4(a) of the STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

The Disputed Domain is <rhinolinings.biz>. The Complainant appears to be the proprietor in the United States of the trademark "Rhino Linings". But for the space between the two words and their initial capitalisation, which attributes cannot be reflected in a domain name, the Disputed Domain is identical to a trademark in which the Complainant has rights. It is in any event confusingly similar thereto.

The Respondent actually does not deny that the Disputed Domain is identical to the Complainant’s trademarks.

The Panel finds that the Complainant has proven Paragraph 4(a)(i) of the Policy.

The Complainant asserts that pursuant to the Award the Respondent has no rights or legitimate interests to use or register the "Rhino Linings" name "in the United States or any other country outside of South Africa".

The Complainant does not provide evidence, apart from the Award, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain.

The Respondent asserts that it has been trading using the "Rhino Linings" mark since 1986, and that it used and obtained rights in that mark before "the founding date of the Complainant".

The Respondent asserts that it has promoted and is promoting the "Rhino Linings" mark worldwide.

The Respondent asserts that the Complaint acknowledges the Respondent’s right to the "Rhino Linings" mark in South Africa.

It is clear that the Respondent was using the Disputed Domain or a name corresponding to the Disputed Domain, in connection with a bona fide offering of goods or services, before any notice to it of this dispute. This is consistent with the Award in which it is stated at Paragraph 8.1 that the arbitrator accepts "Evan’s evidence that the name "Rhino Linings" was used by Evans and Rhino International [Respondent] in connection with their business in South Africa since before 1988".

Furthermore, the Panel finds that the Respondent has been commonly known (at least aurally) by the Disputed Domain, even if it acquired no trademark or service mark rights.

The Complainant has certainly not proven Paragraph 4(a)(ii) of STOP and the Respondent has demonstrated pursuant to Paragraph 4(c)(ii) and (iii) that it has a legitimate interest in the Disputed Domain.

Given the Panel’s finding that the Respondent has rights or legitimate interests in respect of the Disputed Domain, it is strictly unnecessary for the Panel to consider whether the Disputed Domain was registered or is being used in bad faith. However, the Panel will briefly address this below.

The Complaint states that "the Respondent has registered the [Disputed Domain], or is using it in bad faith and in defiance of the International Arbitration Award dated February 12, 2001, which specifically prohibits "… Morgan Evans, whether by himself or through agents, be enjoined and restrained until further award from interfering with or otherwise challenging or claiming rights to [the Complainant’s] business or business relationships.""

Evans is not the Respondent in this Complaint. The Respondent is a company incorporated in South Africa. There is no evidence before the Panel that the Respondent is Morgan Evans’ agent, despite the fact that he may be a shareholder and director of the Respondent.

The Complainant has not specifically asserted any of the factors listed in Paragraph 4(b) of STOP that would, if proven, be evidence of the registration or use of the Disputed Domain in bad faith.

The Award does not contain specific evidence about the purpose for which the Disputed Domain was registered or is being used.

On the balance of probabilities the Panel finds that the Disputed Domain was not registered and nor is it being used in bad faith. Therefore the Complainant has also not proven Paragraph 4(a)(iii) of the STOP.

The Complainant having failed to prove the requirements of Paragraph 4(a)(ii) and (iii) of the STOP, the Panel dismisses the Complaint.