WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fibrefab Limited v. Whoisguard Protected, Whoisguard, Inc. / Constantinos Shiakallis
Case No. D2016-2259
1. The Parties
Complainant is Fibrefab Limited of Milton Keynes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Howes Percival LLP, United Kingdom.
Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Constantinos Shiakallis of Larnaca, Cyprus, represented by Wright Hassall LLP, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <optronicsplus.net> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2016. On November 7, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2016, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on November 9, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 21, 2016.
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 November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. On December 8, 2016, Respondent asked for an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension, and confirmed that the new deadline for Response was December 16, 2016. The Response was filed with the Center on December 16, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 21, 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.
On January 4, 2017, Complainant submitted an unsolicited Supplemental Filing. On January 6, 2017, the Panel issued Procedural Order No. 1, which stated:
Further to Complainant’s Supplemental Filing, received on January 4, 2017, the Respondent and Mr. Psaltis have until January 18, 2017 to submit a response to Complainant’s Supplemental Filing. Sworn and notarized affidavits from Respondent and Mr. Psaltis are strongly encouraged as part of this response.
Respondent submitted a Further Response on January 18, 2017, supported by a sworn and notarized declaration by Mr. Psaltis. The Panel, in its discretion, has considered the Parties’ supplemental submissions.
4. Factual Background
This section discusses the facts and assertions of the Parties as presented prior to the Parties’ supplemental submissions.
According to Complainant, it is a wholly owned subsidiary of Optronics Limited. Complainant alleges that, since at least as early as 2002 it has manufactured and sold “cabling and connectivity products and solutions such as data cables (copper and fibre optic), assemblies, patch cords, patch modules, cleaning and consumables, equipment and testing equipment” under the mark OPTRONICS. Complainant alleges that it has manufactured and sold similar products under the mark OPTRONICS PLUS since 2004. The record in this case contains a number of examples of Complainant’s use of these alleged marks.
According to an English High Court decision in Case No. HC-2016-002402, handed down on September 15, 2016, Complainant and its alleged subsidiary Auriga (Europe) Limited (“Auriga”) “have been trading in the goods in question, using the name Optronics as a brand name […] for at least 14 years.” The High Court went on to hold that Claimant’s use of the OPTRONICS mark “has been substantial, not only in terms of duration, but also in terms of the volume of sales.” In this decision, in which the High Court was being asked to issue an interim injunction against the defendants, the High Court observed:
I turn to consider the three ingredients of a claim for passing off. The first is, of course, whether there is a goodwill associated with the indication in question. For the reasons which I have given, I am satisfied that the claimants have a very real prospect of successfully establishing goodwill associated with the name Optronics as a brand for goods of the type in question and not merely as being descriptive. Moreover, I consider that they have a very real prospect of successfully establishing goodwill in the name Optronics even if not presented in stylised form and accompanied by the other elements of the logos. Furthermore, I consider that they have a real prospect of successfully establishing goodwill in Optronics when combined with the word Plus.
The Domain Name was registered on June 23, 2016. The Domain Name resolves to a website featuring the header “Network solutions you can trust” and the statement “We create the infrastructure that connects people and technology through every evolution.” The website contains various links to “Solutions” and “Products.” The site also bears a copyright notice with a copyright symbol and the following text: “2016 Optronics Plus. All Rights Reserved.” According to Complainant, the website “purports to trade in optical and cable networks.”
According to Complainant, during the course of the English High Court proceedings noted above, Respondent “purported to have acquired” Optronics Plus Limited (“OPL”), one of the named defendants in that case. OPL apparently changed its name to Abelardus Limited (Abelardus”). In an e-mail dated October 11, 2016 to Complainant’s representative, Respondent wrote in part:
“I am the new owner and Director/Secretary of both ABELARDUS LTD and OPTRONICS TRADING (UK) LIMITED.
The company OPTRONICS TRADING (UK) LIMITED owed me money for services rendered. Due to their inability to pay me (because of litigation against them, as they alleged), both company shares were transferred to me as partial compensation for my services.
On obtaining the shares I was notified about litigation from FIBREFAB LIMITED and AURIGA (EUROPE) LIMITED in Claim No. HC-2016-002402.
As I am not interested in trading in optical/cable networks etc in the two companies, the court orders against the two companies are irrelevant to their future business and I shall not be defending the law suit.
I can confirm that the two companies do not possess any optical or copper cables, networks, or other relevant products, nor do they operate of [sic] possess any websites nor do they possess any written materials regarding trademarks, trade names, product descriptions, branding or anything else for that matter regarding optical/cable networks etc (or anything else for that matter) so there is no way that these companies can in any way infringe any of the Plaintiffs alleged rights. If the two companies have breached any of the Plaintiffs alleged rights in the past, that would be a fact that is not in my knowledge and for which I do not have any responsibility.”
A month later, on November 11, 2016, the English High Court entered a Judgment in Default in favor of Complainant and Auriga (now known as Optron Holding Limited) against the defendant companies now owned and controlled by Respondent. The High Court ordered the defendants to cease using the name OPTRONICS in relation to the subject goods, ordered an inquiry into damages suffered by Complainant and Auriga, ordered the defendants to transfer to Complainant the domain name <optronics.co.uk>, and ordered the defendants to pay GBP 50,000 in costs to Complainant and Auriga.
Before ownership of OPL (now Abelardus) and Optronics Trading (UK) Limited (“OTL”) was sold to Respondent, and at the time the Domain Name was registered, OPL’s directors were Messrs. Grillo and Bishop. Grillo and Bishop had been directors of Complainant until September 30, 2014. It appears to be Complainant’s position that Grillo and Bishop are somehow in cahoots with Respondent to compete unfairly with Complainant by luring Internet users to their website by means of consumer confusion.
In his Response, Respondent, a resident of Cyprus, asks the Panel to treat a fellow Cypriot named Constantinos Psaltis as the “substantive respondent” in this case. In support of this request, Respondent asserts that he is a “marketer and designer of advertising.” In a sworn affidavit, Respondent states: “At or about May 2016 I was approached by the company OPTRONICS PLUS LIMITED, via a UK citizen Mr. Bal Singh who claimed to be the owner, and I was asked to provide them with services regarding marketing of wiring related products that they would like to launch in the UK.” Respondent goes on to state that by September 2016, he had still not been paid for his marketing services, whereupon Mr. Singh told him that OPL had no assets to pay him. Mr. Singh then proposed the transfer of shares in OPL and OTL to Respondent, as well as the domain name <optronics.co.uk>, as partial compensation.
Respondent states further in his affidavit:
“Having no other way to be paid, I accepted the transfer of the two companies and the domain, with a view to try to resell the companies as shell companies (as opposed to operating the businesses) and cut my losses short. Mr Singh told me that he would instruct his domain registration agents, Code Eleven, to transfer the domain name <optronics.co.uk> into my name.”
According to the Response, since 1997 Mr. Psaltis “has worked as a self-employed businessman, installing and selling structured cabling, alarms systems, house wiring, computer and telecom data networks and related products.” Psaltis asserts that his business in Cyprus since 1997 has included the sale of “his own brand of cables, alarm systems and optical fibres, also using the trading name of ‘Optronics’ as well as a range of optical fibres and peripherals under the trading name of ‘Optronics Plus.’” According to Psaltis, his business “exports Optronics and Optronics Plus branded products to many different countries.” Annexed to the Response are a number of catalogue covers going back to 1998 which demonstrate Psaltis’s use of OPTRONICS in connection with his products. Also annexed to the Response are a number of invoices, also going back as far as 1997, showing Psaltis’s use of OPTRONICS in connection with the sale of his products.
Returning now to Respondent himself and his relationship with Psaltis, further background is required. A Cypriot named Charis Charalambous is the director of a company called Code Eleven, a business which registers domain names for customers. According to an affidavit of Charalambous submitted with the Response, a Code Eleven customer, Mr. Andreou, asked Code Eleven in June 2016 to purchase three domain names on behalf of Andreou’s “proposed end customers,” namely, OPL and OTL. One of the three domain names in question was the Domain Name at issue in this case. The other domain names were <optronicsnet.net> and <optronics.co.uk>.
According to Charalambous, his company Code Eleven registered the three domain names at Andreou’s request. Thereafter, Charalambous asserts, he learned of the High Court litigation in England between Complainant and OPL/OTL. Around the time of the September 15, 2016 High Court interim injunction, Charalambous asserts, either OPL or OTL asked him to transfer one of the three domain names he had acquired for them, <optronics.co.uk>, to Respondent, Charalambous states that Code Eleven mistakenly transferred the Domain Name to Respondent instead of <optronics.co.uk>.
Andreou then called Charalambous, stating that he had not been paid for his services to OPL/OTL and asking Charalambous to take down the websites and block access to them in the United Kingdom. Andreou also asked Charalambous to help him to find someone to buy the domain names in order to reduce his losses.
According to the Charalambous affidavit, he was familiar with the business of his fellow Cypriot Psaltis and the fact that he operated under the name “Optronics.” In October 2016, Charalambous approached Psaltis with a proposal to sell two of the domain names (including the Domain Name) plus website development services to Psaltis for EUR 3,500 plus VAT. An invoice dated October 27, 2016 memorializing this transaction is annexed to the Response.
Charalambous then states that he discovered that the Domain Name had already been mistakenly transferred to Respondent, whereupon he contacted both Psaltis and Respondent. According to Charalambous, he has been unable to rectify the error and transfer the Domain Name to Psaltis because the Domain Name is now blocked by the Registrar.
For the foregoing reasons, Respondent asserts that Psaltis is the beneficial owner of the Domain Name, and asks that Psaltis be treated as the substantive respondent in this case. In addition, Psaltis disclaims any association with Messrs. Grillo and Bishop, the former directors of Complainant. Respondent likewise denies any involvement with Grillo and Bishop, and he states that he has no interest in the Domain Name and relinquishes any interest in the Domain Name to Psaltis.
5. Parties’ Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
As noted above, Respondent maintains that Constantinos Psaltis should be treated as the substantive respondent in this case. Both Respondent and Psaltis maintain that the Panel should deny this Complaint. In view of the Panel’s ruling below, the Panel will not lay out all of Respondent’s arguments under each of the three elements required under the Policy.
C. Supplemental Submissions
The Parties’ supplemental submissions do little to clear up the picture, and most of what was offered is not worth recounting here as it does not lead the Panel to a different conclusion which could be formed solely on the basis of the initial materials submitted. To the extent a relevant point was raised in the supplemental submissions, it will be taken up below in the “bad faith” section. It does bear noting here, however, that in its Supplemental Filing, Complainant stated:
“Whilst the Complainant finds Respondent[’]s and Mr. Psaltis’ explanation of the background to the preliminary issue [of adding Psaltis as a Respondent] somewhat incredulous, provided it has an opportunity to set out its case in relation to Mr. Psaltis’ position, it does not object to Mr. Psaltis being added as a Respondent to this complaint.”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through demonstrated use in commerce, in the marks OPTRONICS and OPTRONICS PLUS. The finding of the High Court in this respect, coupled with the evidence of use in the record, satisfies the Panel to this effect.
The Domain Name entirely incorporates the OPTRONICS PLUS mark. The Panel concludes that the Domain Name is confusingly similar to the mark in which Complainant has rights.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In view of the Panel’s conclusion regarding “bad faith” in the next section, it is unnecessary for the Panel to address the “rights or legitimate interests” issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel cannot conclude from this record that the Domain Name was registered and used in bad faith, whether one looks solely at the named Respondent or at Mr. Psaltis, the purported “substantive respondent.” (It will be recalled that Complainant has not objected to Mr. Psaltis being treated as an additional Respondent.)
There is enough sworn affidavit testimony and contemporaneous documentation in the record (such as the contract by which Psaltis purchased the Domain Name, the October 11, 2016 e-mail from Charalambous to Complainant, and the evidence showing Psaltis’s use of OPTRONICS as a trade name since 1997), to disqualify this case as a clear case of cybersquatting. As noted above, Respondent denies under oath any involvement with Messrs. Grillo and Bishop, the two gentlemen formerly associated with Complainant who, according to Complainant’s theory of the case, lurk behind the mischief. The Complaint and the annexes thereto do not adequately link Grillo and Bishop to Respondent (or Psaltis).
The only point in the Parties’ supplemental submissions worthy of comment in this regard is Complainant’s allegation that documentation in support of the assertions about Mr. Psaltis’s use of the OPTRONICS mark as set forth in the initial Response that was “created in bad faith to support Mr. Psaltis’ bad faith use” of the Domain Name. Complainant cites to a number of alleged factors, the principal of which appear to the Panel to be: (1) “There is no independent evidence of Mr. Psaltis trading under the name ‘Optronics”; and (2) “Mr. Psaltis, through the company Polysourcit, of which he is a director, opened an account with the Complainant in September 2015 and purchased various OPTRONICS and OPTRONICS PLUS products from the Complainant.”
As respects the first asserted factor, Respondent’s initial Response annexed materials showing Mr. Psaltis’s use of the OPTRONICS mark in catalogues going back to the 1990s, and those catalogues also listed Mr. Psaltis by name. If these documentary annexes to the Response are complete fabrications, they do not appear to the Panel to be any less genuine than some of the annexes put forth by Complainant in this case. This Panel sees nothing suspicious in the materials, and Complainant has not pinpointed anything particularly dubious about them. If anything, this claim of fabrication underscores the conclusion that this dispute belongs in a court of law somewhere.
As respects the second asserted factor, Mr. Psaltis states in his sworn declaration that he became aware in 2014 of a company using the brand OPTRONICS in the United Kingdom. He investigated the matter and, in September 2015, made a single group of product orders from Complainant as a “test purchase.” Mr. Psaltis states that he was not a repeat customer of Complainant.
If the version of events put forth by Respondent and Psaltis is false, such is not apparent from the considerable evidence put forth in the Response. To test the veracity of Respondent’s evidence with any level of certitude, a tribunal would need the benefit of discovery and cross-examination, as well as further investigation and advocacy by counsel for the parties, all of which lies beyond the purview of this streamlined proceeding. As things stand, this Panel finds Respondent’s story facially credible, albeit somewhat elaborate and even bizarre.
Complainant has not established Policy paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: January 21, 2017