1.1 The Complainant is MBE Glazing Systems Limited of Elland, West Yorkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Clarion Solicitors Limited, United Kingdom.
1.2 The Respondent is 365 IT Solutions Ltd of Halifax, West Yorkshire, United Kingdom, represented by Legatus Law, United Kingdom. 2. The Domain Name and Registrar
2.1 The disputed domain names and (the “Domain Names”) are registered with Webfusion Ltd trading as 123-reg (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 The Center verified that 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 12, 2016. Upon receipt of that notification, Mr. M[ ] of the Respondent sent an email to the Center claiming that the Complainant had engaged in fraudulent behavior and that this had been reported to the police. The relevance of this allegation to these proceedings was not explained.
3.4 In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2016. The Response was filed with the Center on March 3, 2016.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 11, 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.
3.6 On March 16, 2016 the Complainant’s submitted an unsolicited supplementary submission in these proceedings in which it sought to reply to certain allegations in the Complainant’s response. An additional copy of this document was filed by the Complainant on March 17, 2016 to which a certification of accuracy had been added. On March 24, 2016 the Respondent submitted an unsolicited supplementary submission in response. The admissibility of these submissions is addressed later on in these proceedings. 4. Factual Background
4.1 The Complainant is a company incorporated in England and Wales in 1992 and since then has offered various glazing related services under the name “MBE Glazing”. Since then it has grown into a business that in the financial year 2014/15 had turnover in excess of GPB 9 million. The letters “MBE” are the initials of the forenames of the Complainant’s three founders.
4.2 In addition to the trading name “MBE Glazing”, a division of its business has used the name “MBE Reactive” since 2011. This provides maintenance works on an urgent basis. This division of the business has had turnover of approximately GBP 1 million per annum since it started operation.
4.3 The Complainant appears to have registered the Domain Name in January 2006. It has operated a website promoting its business from that Domain Name since 2009. It also registered the Domain Name in June 2011. It has operated a website promoting the “MBE Reactive” division of its business from that Domain Name since 2011.
4.4 The Complainant has identified both Mr. M[ ] and 365 IT Solutions Ltd as respondents in these proceedings. 365 IT Solutions Ltd is an IT company incorporated in England and Wales.
4.5 In or about December 2015, the Domain Names were transferred out of the name of the Complainant. As a result of that transfer the WhoIs details for the Domain Names recorded Mr. M[ ] as the “Registrant Name” and 365 IT Solutions Ltd as the “Registrant Organization”.
4.6 The Panel believes it is apparent from this that notwithstanding that the Complainant has identified both Mr. M[ ] and “365 IT Solutions Ltd” as respondents in this proceeding, the Domain Names have been transferred into the name of, and continue to be held by, 365 IT Solutions Ltd. Accordingly, it considers the correct Respondent in this case to be 365 IT Solutions Ltd.
4.7 Since the Domain Names have been transferred into the Respondent’s name, they have continued to be used for websites promoting the Complainant’s business. 5. Parties’ Contentions A. Complainant
5.1 The Complainant provides evidence of its trading activities under the names “MBE Glazing” and “MBE Reactive”. It contends that as a consequence of those activities it has unregistered trade mark rights in those terms. As a consequence it claims that each of the Domain Names is identical to a trade mark in which it has rights.
5.2 The Complainant claims that it engaged the Respondent to provide it with IT services including the management of its Domain Names in October 2013. It was not until two years after this appointment that the Domain Names were transferred into the name of the Respondent. It is alleged that this was done without the Complainant’s authorization.
5.3 The Complainant claims that on December 23, 2015 it complained in a letter to the Respondent about the transfer of the Domain Name. It claims that the Respondent’s solicitors responded the following day, asserting that the Respondent had paid the registration fees for the Domain Name and that the Complainant had agreed that the domain name should be transferred into the name of the Respondent.
5.4 The Complainant contends that the Respondent’s claim that it had paid for the Domain Name was untrue, and provides evidence in the form of a bank statement that is said to demonstrate a payment on the date that this Domain Name was registered in respect of that Domain Name.
5.5 The Complainant also maintains that its solicitors also demanded in a letter dated January 6, 2016 that the Domain Name be transferred back into the name of the Complainant.
5.6 The Complainant claims that the Respondent’s motives for transferring the Domain Names into its name and refusing to transfer them back to the Complainant are that it is concerned that the Complainant may engage some other IT company and that this was done to try and persuade the Complainant either to continue to engage the Respondent’s services or to make some payment to the Respondent to secure the return of the Domain Names.
5.7 The Complainant contends that in these circumstances the Respondent had no right or legitimate interest in the Domain Names and that the Domain Names have been registered and used in bad faith. B. Respondent
5.8 The Respondent accepts that the Complainant has established a reputation and good will in the names MBE Glazing and MBE Reactive, and that the Domain Names are identical or confusingly similar to those names.
5.9 However, the Respondent claims that it does have a right or legitimate interest in the Domain Names. It also claims that it did not register and has not held the Domain Names in bad faith.
5.10 The Respondent claims that it was set up in 2008 by Mr. M[ ] to write software and design websites for another company, 365 Retail Property Care Limited. It claims that Mr. S[ ], a director of the Complainant became involved in 365 Retail Property Care Limited in or around August 2009 and was asked to provide IT support services to the Complainant.
5.11 365 Retail Property Care Limited went into liquidation in August 2011. The Respondent at that point claims Mr. M[ ] approached Mr. S[ ] and it was agreed that a joint venture be set up whereby the Respondent would supply to the Complainant the same software package it had previously provided to 365 Retail Property Care Limited for a new “MBE Reactive” business. In return for this the Respondent would receive a 20 percent share in that business.
5.12 The Respondent claims that as part of this joint venture arrangement, the Complainant would pay a monthly license fee for its software and the Domain Name.
5.13 The Respondent accepts that the was originally registered in the name of the Complainant, but claims that “for ease”, Mr. S[ ]’s credit card was used to register that Domain Name and that the named registrant of the Domain Name had to match the details on that credit card. The allegation appears to be that Mr. S[ ] was named as the original registrant of that Domain Name as a result. This sum was according to the Respondent repaid to the Complainant in October 2011.
5.14 The way it is alleged that this joint venture operated was that staff of the Respondent operated out of the Complainant’s premises. It is said that discussions took place in November 2014 in relation to the Respondent’s 20 percent share of the business, but that in March 2015 the Complainant took steps to bring its own IT personnel into that business.
5.15 The Respondent further contends that in November 2015 it discovered that the Complainant had copied its software in alleged breach of the joint venture arrangement and that it instructed solicitors to pursue intellectual property claims against the Complainant.
5.16 The Respondent further claims that the Domain Name was transferred into its account with the Registrar in January 2011. How and in what circumstances this was done (particularly given that this appears to pre-date the alleged joint venture arrangement) is not really explained.
5.17 The Respondent states that it “prepared to take a commercial view and no longer continue with [the Domain Name]” and is prepared to transfer the Domain name to the Complainant. However, it contends that it should retain the Domain Name given that it is prepared to continue with the alleged joint venture and license arrangement. C. The Parties’ Supplemental Submissions
5.18 Both Parties have submitted supplemental submissions in these proceedings. None of these were called for by the Panel. The position as to the admissibility of unsolicited supplemental submissions is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel’s appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order”.
5.19 The reason why a party must demonstrate “exceptional” circumstances and that normally it would be necessary to show that it could not have provided the relevant information in its complaint or response, has been addressed in a large number of cases under the Policy including Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889. The Policy is intended to provide an expeditious administrative procedure. Notwithstanding the requirement that each party has a fair opportunity to present its case, these are not court proceedings with the possibilities of several rounds of pleadings and evidence. Parties are provided with the opportunity to put forward its case in a single submission and as such are expected to put the full story as they perceive it, in that submission. Should they for any reason decide to hold back on that material to see first what the other party has to say, they should realise that their chance to deploy that material may be lost.
5.20 The Complainant contends that it should be allowed to submit a supplemental submission to address uses of the Domain Names since the Complaint was filed. It also seeks to correct “factual errors” in the Response.
5.21 In fact the vast majority of this submission is directed to the allegation raised in the Response that the Domain Names were transferred to the Respondent as part of some joint venture arrangement. The Panel is unconvinced that this is material that the Complainant could have raised in its Complaint. It seems clear that for some time the parties have been involved in a dispute as to a whether some form of agreement or joint venture was reached between them in relation to the “MBE Reactive” business. Indeed, this is even hinted at in the Complaint itself. In particular, paragraph 21 of the Complaint admits that on December 24, 2015 the Complainant received a letter from the Respondent’s lawyers which claimed that the Complainant had agreed that the Respondent was the owner of the Domain Name.
5.22 In the circumstances, the Panel concludes that this is something that it might have been reasonably anticipated would be raised in the Response. Therefore, the Panel is not prepared to take into account that part of the supplemental submission which attempts to address this issue.
5.23 That leaves that part of the submission that addresses uses of the Domain Name since the Complaint was filed. This is addressed in a single paragraph of a submission of over 20 paragraphs. It claims that subsequent to the Complaint although the Domain Name continues to be used for a website promoting the “MBE Reactive” business, persons telephoning the number displayed on that website hear a recorded voice asking them to leave a message. The Complainant claims that this “suggests” that the Respondent is diverting customers away from the Complainant or is otherwise disrupting the Complainant’s business.
5.24 The Respondent’s Supplemental Response for the most part seeks to address that part of the Complainant’s supplemental submission addressing the joint venture argument. As this has not been admitted into these proceedings, there is no need to consider this further. So far as the allegation in relation to telephone numbers is concerned, the Response provides an explanation that is not easy to follow. However, it claims the Complainant “has ported the telephone numbers from the Respondent’s account to the name of the Complainant” and there is some ongoing dispute about this. It is claimed that at the time the Complainant’s representatives heard the recorded voice message, the telephone number had been transferred. Therefore, as far as the Panel can tell, the claim is that it is the Complainant that is responsible for this message and not the Respondent. 6. Discussion and Findings
6.1 The Complainant must make out his case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (Policy, paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.2 The Panel accepts that the Complainant has by reason of its use of the terms “MBE Glazing” and “MBE Reactive” unregistered trade mark rights (or to be more precise rights under the English law of passing off) in respect of these terms. This is sufficient to constitute trade mark rights for the purposes of the Policy. Further, the Panel accepts that the Domain Names are confusingly similar to these terms.
6.3 The Panel notes that the Respondent also accepts this. It appears to contend that goodwill in the “MBE Reactive” name and the consequential unregistered trade mark “has arisen as a result of” the alleged joint venture between the Complainant and the Respondent. But it does not contend that the Respondent in some way owns those unregistered trade mark rights.
6.4 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.5 It is customary in decisions under the Policy to separately address the questions of rights and legitimate interests and bad faith registration and use. However, in this case it is more convenient to address them together.
6.6 The reason is that there is a fundamental dispute between the parties as to the circumstances surrounding the registration of at least the Domain Name. It appears to be the Respondent’s position that it was registered pursuant to some form of joint venture agreement with the Complainant whereby it was entitled to register that Domain Name in its own name and to retain that Domain Name. If this were correct, at the very least the Domain Name would not have been registered in bad faith and the Complaint would fail. It is also possible that the Respondent would by reason of that alleged joint venture arrangement have a legitimate interest in the Domain Name and not be holding it in bad faith.
6.7 UDRP proceedings are not the appropriate forum in which to address the issue of who is right so far as this alleged joint venture proceedings is concerned. This and the fact that the Complainant did not really address this point in the Complaint and the Panel has declined to allow further submissions in relation to this issue, all would suggest that if the Panel really needed to determine whether there was or was not such an arrangement in order to reach a conclusion under the Policy, it would be appropriate to dismiss the Complaint so far as this Domain Name is concerned (see for example the discussion in Ritzio Purchase Limited v. Domain Admin, PrivacyP / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services,WIPO Case No. D2015-0875).
6.8 Nevertheless, the Panel does not think it really needs to address the broad question of whether there was some form of joint venture or other commercial agreement and what were its terms. The question it needs to address is the somewhat narrower one of whether pursuant to some sort of commercial arrangement the Complainant agreed that the Respondent was entitled to register and hold the Domain Name in its name.
6.9 What does not seem to be disputed in this case is that the term “MBE”, which appears to be the most distinctive element of the “MBE Reactive” name, is one that refers to the Complainant only. Further, it does not appear to be disputed that the only entity that has actually used the “MBE Reactive” name in business is the Complainant. Further, the Respondent has admitted that by reason of that use it is the Complainant that owns unregistered rights in this term. Therefore, as a matter of commercial common sense, the Panel believes the starting point to be that even had it entered into some form of commercial arrangement with the Respondent regarding the “MBE Reactive” business, it is unlikely that the Complainant would have agreed as part of that arrangement that a domain name comprising the term “MBE Reactive” and being used for that business, could be registered and held by some Respondent.
6.10 It is only a starting point and were there any material before the Panel suggesting that the Complainant did consent to such registration, then the Panel might well have concluded that the Complainant had not made out its case. However, having carefully considered the Response and the material with it, the Panel does not believe that it has brought any real evidence before it that the Complainant agreed to the Respondent registering the Domain Name in the Respondent’s name.
6.11 The Respondent provides material that shows that the format the “MBE Reactive” website is very similar to that of a website previously operated by “365 Retail Property Care Limited”. This does suggest that some sort of license arrangement may have been in place with the Complainant in relation to the content of that website. But that says nothing about the Domain Name, let alone the Complainant’s consent to its registration by the Respondent.
6.12 There are invoices that appear to cover maintenance, licensing and hosting fees for the website operating from this Domain Name. But again there is nothing in this that suggests that the Complainant had consented to the Respondent’s registration of this term.
6.13 There are invoices that show that the Respondent was invoiced by the Registrar in respect of the and domain names. But again this does not demonstrate the Complainant’s consent to the Respondent’s registration.
6.14 There is also a text message in which someone is raising the issue of the valuation of the Respondent “20% stake in Reactive”. However, it does not follow from the fact that the Respondent may have some percentage stake in the business, that it (as opposed to that business) is entitled to register and own a domain name that is used by and incorporates the name of that business.
6.15 Finally, the Respondent relies upon a text message sent by Mr. S[ ] of the Complainant to the Respondent in October 2014. The document is said to evidence the Complainant’s knowledge and acceptance that the domain name was owned by the Respondent. In that text Mr. S[ ], complains about the operation of a website and states “please pass the domain name snd [sic] logging on details to me and I will get somebody else to deal with it also can I remind you that we pay you for this service and the website has not worked properly for over 12 months”.
6.16 It is not at all clear which domain name is being referred to in this text. But even assuming that it is , the Panel is not convinced that this text really demonstrates that Mr. S[ ] knew that this domain name was registered in the name of the Respondent (as opposed to being in the Respondent’s practical control). The text is dated October 2014. So it clearly pre-dates the date when both Domain Names were transferred into the name of the Respondent. It is therefore difficult to read this as talking about getting any Domain Name transferred into the name of the Complainant, when as a matter of fact those Domain Names were already registered in the Complainant’s name. Even if it does demonstrate that the Complainant had some knowledge about in whose name the Domain Name(s) were registered, it does not really evidence that the Complainant consented to any registration in the name of the Respondent.
6.17 Further, there is the fact that the Domain Name was only registered in the name of the Respondent in or about December 2014; i.e. over four years after the date of the alleged joint venture in which it was allegedly agreed that the Domain Name would be owned by the Respondent. The delay here is hard to reconcile with the claim that the Complainant agreed that this Domain Name would be registered in the name of the Respondent.
6.18 Finally, there is the fact that about that time the Respondent also transferred the Domain Name into its name. This cannot be justified or explained by any “joint venture” arrangement with the Complainant in relation to the “MBE Reactive” business. In the absence of any proper explanation as to why that Domain Name was then registered in the name of the Respondent, the Panel accepts that this transfer took place without the consent of the Complainant and therefore that the Respondent has no right or interest in that Domain Name and that it was registered and has been continued to be held in bad faith.
6.19 Perhaps the fact that the alleged joint venture arrangement does not justify or explain why the Domain Name was transferred into its name, is why the Respondent has decided to take a “commercial view” and to consent in these proceedings to its transfer back to the Complainant. But the Respondent’s dealings with the Domain Name are significant. If it transferred one Domain Name belonging to the Complainant without justification, it lends credence to the Complainant’s claim that the other Domain Name was registered by the Respondent without the Complainant’s consent.
6.20 Given this, the Complainant holds on the balance of probabilities on the material before it that the Respondent also has no right or legitimate interest in the Domain Name and that this Domain Name has been registered and continues to be held in bad faith.
6.21 The Panel wishes to make it clear that it does not follow from these conclusions that there was no business arrangement between the Complainant and the Respondent, or that the Respondent has no claim against the Complainant in relation to the misuse of its intellectual property and/or that the Respondent does not have some sort of financial interest in the “MBE Reactive” business. The Panel expresses no view in this respect and the Respondent, if it wishes, can pursue those claims elsewhere. It is simply that on the material before it the Panel has concluded on the balance of probabilities that there is no justification under the Policy for the Respondent to have registered and to continue to hold the Domain Names. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: March 25, 2016
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