The Complainant is Emadeldin Abdelfattah Mohamed Elakshar of Cairo, Egypt, represented by Mohamed Mostafa Ali Abdelghany, Egypt.
The Respondents are Kareem Fouad and Ahmed Yossef, Crius Solutions of Cairo, Egypt, represented by Yomna Osama Arafa Aly, Egypt. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2018, 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. In response to a notification by the Center on October 9, 2018 the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on the same date.
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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent filed an email communication on October 11, 2018 and its Response on November 6, 2018.
The Center appointed Mohamed-Hossam Loutfi, Johan Sjöbeck and The Hon Neil Brown Q.C. as panelists in this matter on November 28, 2018. The Panel finds that it was properly constituted. Each member of 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 December 2, 2018, the Complainant filed a supplementary submission.
On December 11, 2018, the Respondent filed a supplementary submission in reply dated December 9, 2018.
The Panel ordered that the time by which the decision should be delivered should be extended from December 12, 2018 to December 24, 2018. 4. Factual Background
The Complainant is Emadeldin Abdelfattah Mohamed Elakshar is claiming in his capacity as a chairman of the Egyptian Company for Manufacturing Furniture In &Out (EMFIO), Commercial Registry No. 824 for the year 2014 issued by Investment Office / Cairo, ownership of a trademark named “In&Out” which is owned by an Egyptian joint stock company called “EFIO: In &Out Furniture Egypt”, Commercial Registry No.7288 for the year 2001 issued by Investment Office / Cairo.
A judicial case No. 687 has been field by the Complainant in for the year 2018 before the Cairo Economic Court to obtain liquidation and financial statement has been field by the Claimant as to obtain liquidation of “In & Out furniture Egypt (EFIO)”. 5. Parties Contentions A. Complainant
1. This Complaint is submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), approved by ICANN on September 28, 2013, and in effect as of July 31, 2015, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) in effect as of July 31, 2015.
2. The Complainant registered the trademark described in the Complaint as IN&OUT and contends that it has rights in that trademark. A copy of the registration certificate is annexed to the Complaint as Annex 4.
3. The Respondent has no rights or legitimate interests in the disputed domain name. In support of that contention the Complainant submits that the domain name was used to represent “the Complainant” (sic) for 10 years but that a hired party will not transfer the disputed domain name to the Complainant.
4. The Complainant again contends that the trademark in question is owned by “The Egyptian for Manufacturing Furniture In & Out (S.A.E)”(sic).
5. The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant maintains that the disputed domain name was purchased and operated on behalf of the Complainant for more than 10 years and is now being held “hostage” and used in bad faith in order to be exploited and for monetary gain. 6. Respondent
The Respondent made the following contentions.
1. The company of which the Complainant claims to be the Chairman and Managing Director, namely “The Egyptian for Manufacturing Furniture In & Out ( S.A.E)”, is not the owner of the trademark relied on by the Complainant and said to be contained in Annex 4 to the Complaint.
2. That trademark is owned by another company, In & Out Furniture Egypt.
3. The Complainant therefore has no standing to bring this proceeding as an individual on behalf of The Egyptian for Manufacturing Furniture In & Out (S.A.E) as that company is not the owner of the trademark relied on.
4. The Complainant also has no standing to bring the Complaint as it is not authorized by In & Out Furniture Egypt to do so.
5. It is also not correct as alleged by the Complainant that the disputed domain name was used to represent the Complainant for ten (10) years. The fact is that the domain name has been used by the aforesaid In & Out Furniture Egypt for the past ten (10) years. Accordingly, the domain name has not been used by the company that the Complainant claims to represent.
6. The main reason for such false claims being made is the fact that there is a legal dispute between the shareholders of In & Out Furniture and the Complainant. As a result, 50% of the shareholders of In & Out Furniture have instituted court proceedings that it be dissolved. That matter is currently before the court.
7. Accordingly, Complainant does not represent In & Out Furniture which owns the trademark and the fact that he has represented that he does indicates his bad faith.
8. The Complainant claims that the Respondents have no rights or legitimate interests in the disputed domain name. He alleges that this is so because the disputed domain name has been used to represent the Complainant for 10 years and is being wrongly held by hired parties who will not transfer it to the Complainant. In fact, the disputed domain name does not represent the Complainant but, rather, represents In & Out Furniture, Egypt.
9. Neither of the Respondents is an employee of the Complainant. Their right and legitimate interest in the disputed domain name arise from the fact that they have registered and administered the disputed domain name for In & Out Furniture, Egypt which owns the disputed domain name and also the IN&OUT trademark and from the fact that In & Out Furniture, Egypt has used the disputed domain name for 10 years to promote its business with the knowledge of the Complainant.
10. It would also be inappropriate to entertain proceedings relating to the transfer of the disputed domain name at a time when the proceedings between the shareholders of In & Out Furniture, Egypt are still ongoing, as the disputed domain name is an asset of that company. Moreover, because of those proceedings, the disputed domain name is not being used and will not be used until those proceedings are resolved.
11. The disputed domain name has not been registered and used in bad faith.
12. First, the Respondents did not register the disputed domain name in bad faith because they registered it on behalf of and with the approval of In & Out Furniture, Egypt, which owns the corresponding IN & OUT trademark.
13. Secondly, the disputed domain name cannot have been used in bad faith as it is not being used at all. A decision was made not to use it until the proceeding between the shareholders is resolved. Until that event occurs, In & Out Furniture, Egypt uses a difference domain name, namely to promote its business.
14. These facts show that the Respondents have not acted in bad faith but in good faith.
The Respondent contends that the Complaint should be denied. Supplementary Submissions A. Complainant
1. The Complainant elaborated on the various submissions he had made in the Complaint. The Panel will not deal with those submissions in detail but draws attention to the following specific matters raised by the Complainant.
2. There is no company named In & Out Furniture, Egypt, the company relied on by the Respondents.
3. The Complainant provides details of the internal dispute concerning the two companies, The Egyptian [company] for furniture (In & Out) (“ EFIO”) and The Egyptian [company] for Manufacturing furniture (In & Out)(“ EMFIO”) and the role of two other companies, The Egyptian [company] (Online) for Information Systems: (“ONLINE”) and The Egyptian Modern Company for Furniture (“Hub Furniture” or “HUB”).
4. The Complainant submits that the lawsuit to which a reference has already been made is a financial settlement lawsuit […] to expose all the accounts, financial statements and expenses of the company […]; the lawsuit was not a request for liquidation as alleged in the Response and the translation that the respondent attached is false and far from accurate.
5. The Respondent Kareem was hired by ONLINE to handle all the online presence and marketing of In & Out and used to provide In & Out with domain name renewal receipts instructions from GoDaddy the Registrar.
6. Mr. Kareem became a shareholder and a manager of ONLINE in January 2016 along with another Manager and in July of 2016 he became the only Manager of ONLINE (Annex 3 and Annex 5).
7. Mr. Kareem is registered as a Manager of HUB.
8. There is no one with rights and privileges more than the Complainant to pursue the company’s assets and properties.
9. The Complainant paid for the registration of the disputed domain name.
10. The Complainant also provided more details of its contentions concerning the dispute. B. Respondents
1. The Respondents elaborated on the various submissions they had made in the Response. The Panel will not deal with those submissions in detail but draws attention to the following specific matters raised by the Complainant.
2. The Respondent take issue with allegations of the Complainant which it contends are defamatory of the Respondents.
3. The Respondents re-iterate their submissions concerning the alleged lack standing of the Complainant in this proceeding.
4. The Respondents make further submissions concerning the relations between the various companies mentioned and takes issue with the Complainant on a series of factual matters.
5. The Respondents summarize their submissions as follows:
(a) The Complainant is fabricating facts about the company owner of the trademark and has failed to prove that he has legal standing to file the Complaint;
(b) The main reason behind the Complainant’s Supplementary submission is to defame the Respondents and other companies which are not parties in the dispute from the beginning;
(c) The Complainant failed to prove any of the elements required by the Policy;
(d) Defects and inadequacies in the evidence show the bad faith of the Complainant and his intention to defame the Respondents. 7. Discussion and Findings Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel has conducted a close examination of all of the submissions made by the Parties and the evidence adduced in their support. It has also given careful consideration to whether it is possible to determine the dispute using the framework of the UDRP and the related questions of how the Panel would do so and whether the UDRP contains any practical difficulties in the way of resolving the dispute in a just manner. In that regard, the Panel notes that Rule 15(e) contemplates that there will be cases where “the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy […]” and provides that when such cases arise, the Panel “shall so state”. The Panel has therefore given consideration to whether the dispute, as the Panel understands it, is within the scope of the Policy.
Having done so, the Panel has no hesitation in saying that this complex and contentious dispute between the parties is essentially a commercial dispute that is outside the scope and purpose of the UDRP. It will be seen from a reading of the contentions of the parties that there is certainly a dispute between the Parties, it is essentially a commercial dispute, it covers many potential causes of action and it is one of considerable substance. At best, it is a domain name case in only a peripheral manner and in the sense that depending of the outcome of the substantive issues an order might or might not be made concerning the registration of a domain name. But of far more substance is a range of issues that go much wider. Some of the areas involved are trademarks, (to determine which parties are entitled to which if any trademarks), company law (to determine the effect of there being several companies apparently overlapping each other with related ownership), employment law (to determine the capacity of the Respondents in registering and using the domain name in question), issues of trusts and the obligations under them, and, almost inevitably in such disputes, defamation.
The view just expressed, that the dispute as it has been presented to the Panel is outside the scope of the Policy, is consistent with the approach taken by many UDRP panelists. Although there are many decisions that could be cited in support, the Panel refers only to the recent decision in Thomas E. Wright v. Oliver Graham,FORUMCase No: FA1804001783404 (May 21, 2018), where the same or similar point arose as in the present case and the panel observed:
“Complainant contends that Respondent was formerly hired by Complainant for services, which Respondent performed and Complainant paid for. Complainant claims that Respondent then hijacked the domain name from Complainant without permission. In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.”
Not only is this so, but there is already on foot a court proceeding which the Complainant says is “a request for liquidation” and the Respondents maintain is “a financial settlement lawsuit […] to expose all the accounts, financial statements and expenses of the company […]”. The outcome of that proceeding must effect the domain name issue in one way or another as it may be a company asset.
The Panel also mentions that aspect because, even if the proceeding went ahead under the UDRP it would be impossible to resolve without the benefit of procedures not available under the Policy, such as viva voce evidence with cross-examination, discovery, interrogatories and the taking of accounts. In any event, the real dispute between the parties is a commercial and trademark dispute which should be resolved through litigation in the appropriate court.
For these reasons, the Panel finds the dispute is not appropriate to be dealt with under the Policy and the Complaint is therefore denied.
Accordingly, and as this dispute may well be litigated in another tribunal, the Panel will refrain from expressing concluded opinions on the factual issues that have arisen. 8. Decision
For the foregoing reasons, the Complaint is denied.
Mohamed-Hossam Loutfi
Presiding Panelist
Johan Sjöbeck
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: December 28, 2018
Full & Egal Universal Law Academy