WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bauglasindustrie GmbH v. Easyspace Privacy / Pietro Guarino, Glass Block Technology Case No. D2018-0899 1. The Parties

Complainant is Bauglasindustrie GmbH of Schmelz, Germany, represented by Pilkington Group Limited, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”).

Respondent is Easyspace Privacy of Glasgow, United Kingdom / Pietro Guarino, Glass Block Technology of Hyde, United Kingdom, represented by Aticus Law Solicitors, United Kingdom. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Easyspace (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, the Center notified Complainant that the Complaint was administratively deficient. In response, Complainant filed an amended Complaint on April 25, 2018.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. At Respondent’s request, the due date for Response was extended to May 26, 2018. At Respondent’s request, the due date for Response was subsequently extended to June 5, 2018. The Response was filed with the Center on June 6, 2018.

The Center appointed Robert A. Badgley as the sole panelist in this matter on June 12, 2018. 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.

On June 14, 2018, the Panel issued Procedural Order No. 1, which stated in relevant part:

“Pursuant to the powers of the Panel granted under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel requests the following information, supported where possible with documentary evidence:

1. Complainant shall explain the relationship among Bauglasindustrie(s) GmbH, Pilkington Group Limited, and NSG, including the respective rights of such entities vis-à-vis any REGLIT trademark.

2. Complainant shall provide evidence of use of the REGLIT mark by Bauglasindustrie(s) GmbH, Pilkington Group Limited, and/or NSG since 1999.

3. Complainant shall explain the contractual relationship between Bauglasindustrie(s) GmbH, Pilkington Group Limited, and/or NSG and Westcrowns Contracting Services Ltd (“Westcrowns”), including any rights granted to Westcrowns to use the REGLIT mark and/or register the Domain Name .

4. Respondent shall explain (with evidence) its allegation (Response, Section III, paragraph C, i.e., ‘bad faith’ section) its allegation that Glass Block Technology ‘has actively sought to enter into a commercial arrangement for the provision of glass products from the complainant and/or claimant and was in engaged in such discussions before acquisition of R (indeed some considerable time before)’.

5. Respondent shall respond to Complainant’s allegation (Amended Complaint, Section VI, paragraph B, i.e., ‘rights or legitimate interests’ section) that ‘Respondent is sourcing its goods from a competitor of the Complainant.’ In this connection, Respondent shall state whether it has sold, or attempted or advertised to sell, any glass products or services from a source other than Complainant.

The Parties’ submissions should be confined to those matters set out above. The Parties are requested to submit the above-mentioned information (and supporting evidence) by June 22, 2018. The Parties shall have until June 29, 2018 to respond to the other Party’s June 22, 2018 submission.”

The Parties timely responded to Procedural Order No. 1. On July 9, 2018, the Panel issued Procedural Order No. 2, which stated in substance:

1. Complainant shall provide a copy of its contract with Westcrowns (and may redact financial or pricing information) in which Complainant authorized Westcrowns to register and/or use the Domain Name and/or to use the REGLIT mark in commerce.

2. Complainant shall indicate whether it received a contemporaneous copy of the November 22, 2017 report to creditors submitted by the Administrator for Westcrowns (see paragraph 3 of Respondent’s reply to the Administrative Panel Procedural Order No. 1) or was otherwise aware of paragraph 5.22 of said report to creditors.

3. In the event the answer to question 2 above is Yes, Complainant shall indicate whether it understood paragraph 5.22 of the Administrator’s report to creditors to refer in part to the REGLIT mark or the Domain Name , and shall otherwise explain why Complainant did not object to the report as suggesting that rights to the Domain Name and/or the REGLIT mark were the property of Westcrowns.

Complainant shall provide the requested information on or before July 16, 2018. Respondent shall have until July 20, 2018 to reply to Complainant’s submission.”

The Parties timely responded to Procedural Order No. 2. 4. Factual Background

Complainant is a majority owned subsidiary of Pilkington Group, which in turn is a majority owned subsidiary of NSG UK Enterprises Limited. According to Complainant, these entities are all part of the so-called “NSG Group”. In any event, these entities will be referred to collectively as “Complainant” unless the context requires more specificity.

Complainant holds several registered trademarks for REGLIT, including International Trade Mark Registration Number 336680 (registered July 5, 1967), for “profiled building glass and assembly elements thereof,” including building glass panels for the production of glass walls, and United Kingdom Trade Mark Registration Number 936539 (registered January 15, 1969) for glass blocks, glass sheets, and glass plates for use in the production of walls. According to Complainant, its use of the mark REGLIT in respect of glass products “spans more than forty years” and the REGLIT mark has “acquired substantial goodwill and reputation in the architectural sector.”

In October 1999, Complainant engaged a firm called Westcrowns Contracting Services Ltd. (“Westcrowns”) to distribute Complainant’s glass goods in the United Kingdom. Complainant and Westcrowns executed a Distribution Agreement (the “1999 Agreement”), which provided, with respect to Complainant’s trademarks:

“5.1 For and on behalf of the Trade Mark Owner the Manufacturer hereby authorises the Distributor to use the Trade Marks in the Territory on or in relation to the Products for the purposes only of exercising its rights and performing its obligations under this Agreement. In the case of the Reglit trade mark, unless the parties shall agree any different period in writing such authorisation shall apply only for a period of two years from the Commencement Date.”

Complainant asserts that it continued to permit Westcrowns to use the REGLIT mark beyond the initial two-year period noted in the above-quoted paragraph 5.1 of the 1999 Agreement. Complainant did not provide evidence that it gave Westcrowns written authority to do so.

With respect to Complainant’s trademarks, paragraph 5.4 of the 1999 Agreement further provides:

“Except as provided in clause 5.1 the Distributor shall have no rights in respect of any trade names or Trade Marks used by the Manufacturer in relation to the Products or of the goodwill associated therewith, and the Distributor hereby acknowledges that, except as expressly provided in this Agreement, it shall not acquire any rights in respect thereof and that all