The Complainant is Melpomeni Tsoukali, Greece, represented by Papapetros, Papangelis, Tatagia & Partners, Greece.
The Respondent is George Chatzopoulos, Greece, represented by Gkarilis Stylianos, Greece. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2019. On December 2, 2019, the Center received an email communication from the Respondent. 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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. On January 3, 2020, the Center received an email communication from the Respondent, requesting an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to January 13, 2020. The Response was filed with the Center on January 13, 2020. The Center appointed Adam Taylor, Marina Perraki, and Isabelle Leroux as panelists in this matter on February 26, 2020. 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. 4. Factual Background As a preliminary matter, it is clear to the Panel from the case file that the named Respondent George Chatzopoulos, a web developer, registered the disputed domain name on behalf of Nikolaos Gryparis, who has filed the Response and describes himself as “the Respondent”. Clearly, Nikolaos Gryparis is the “real” Respondent and the Panel treats him as such. For terminological convenience, unless otherwise stated, references to “the Respondent” below denote Nikolaos Gryparis, and George Chatzopoulos is referred to as “the Developer”. In view of the complicated background, the Panel will set out the main facts in chronological order. The Complainant and the Respondent were formerly married to each other since the 1980s and were jointly involved in the operation of the Sea Satin Market Restaurant and Caprice Bar on the Greek island of Mykonos. November 20, 2002: The Respondent applied for European Union trade mark no. 2938181 for SEA SATIN MARKET in classes 25, 35, 41, and 43 (“the EU Mark”). The EU Mark was registered on November 14, 2005. 2014: The Parties’ marriage broke up. 2016: The Respondent assigned the EU Mark to the Complainant. Thereafter the Complainant granted a number of licences to the Respondent to use the EU mark for the Respondent’s restaurant business (“the Licence”). November 16, 2017: The Complainant applied for the following three Greek trade marks (all registered on June 5, 2018 and collectively referred to as “the Greek Marks”): no. 246246 for SEA SATIN, in classes 41 and 43; no. 246252 for SEA SATIN MYKONOS, in class 43; and no. 246254 for SEA SATIN RESTAURANT, in class 43. October 31, 2018: The Licence ended. April 16, 2019: The Complainant filed a petition with the Syros Court of First Instance seeking interim relief against the Respondent. April 17, 2019: The Greek court issued a temporary restraining order based on the Complainant’s registered trade marks, prohibiting the Respondent from using the trade mark SEA SATIN. May 5, 2019: The Respondent applied for Greek trade mark no. N255242 for SEA SATIN BY GRIPARIS in classes 38 and 43. That application is under opposition by the Complainant. May 6, 2019: The disputed domain name was registered in the name of the Developer. At some point thereafter, the disputed domain name began to be used for a website promoting the restaurant, which was named on the website as “sea satin BY GRYPARIS”. July 31, 2019: The Syros Court of First Instance issued a confirmatory order (“the Order”) prohibiting all use of the trade mark SEA SATIN, alone or in combination with any words or sign, in any electronic or non-electronic means. In the course of its ruling the court stated that the additional indication “BY GRYPARIS”, adopted by the Respondent since the filing of the Complainant’s petition, lacked distinctive character and may lead to customer confusion. 5. Parties’ Contentions A. Complainant A summary of the Complainant’s contentions is as follows. The Complainant’s marks are famous as the “Sea Satin” restaurant is a legendary name in the field of Greek dining. The Complainant has personally invested in the features that have generated such fame. The disputed domain name is confusingly similar to the Complainant’s registered trade marks, which consist or mainly consist of the words “Sea Satin”. The addition of “by Gryparis” enhances the risk of confusion as Gryparis is the name of the Complainant’s separated husband and under which name the Complainant is also widely known. The Developer, who is the owner or employee of a software company, lacks rights or legitimate interests in the disputed domain name and owns no relevant trade marks, whereas the Complainant owns exclusive rights in a series of SEA SATIN trade marks. The Developer is not making a bona fide offering of goods and services as his only connection with the restaurant is that he developed the website at issue. The domain name was registered and is being used in bad faith. As the disputed domain name is far from generic, the Developer was clearly aware of the fame of the Complainant’s series of trade marks and of the restaurant. The disputed domain name was registered to create a likelihood of confusion with the Complainant’s registered trade marks. The website at the disputed domain name seems to be advertising restaurant services provided the Respondent who is prohibited by a Greek court order from using the trade mark SEA SATIN, either alone or with any other words. The disputed domain name was registered in the Developer’s name in order to enable the Respondent to conceal that he was the true owner of the disputed domain name and website and to circumvent the court order which had been issued before registration of the disputed domain name. The foregoing constitutes registration and use of the disputed domain name in bad faith by the Developer who was obviously aware that registration and use of the disputed domain name was illicit. Furthermore, the Developer is trying to make an unfair profit from the Complainant’s marks by including “Sea Satin” in the list of projects on his website. B. Respondent A summary of the Respondent’s contentions is as follows. For the following reasons the disputed domain name is not identical or confusingly similar to the Complainant’s trade mark and the Respondent possesses legitimate interests in respect of the disputed domain name, which was not registered and used in bad faith. The Respondent is widely known for his business in Mykonos and has been using the mark SEA SATIN MARKET since 2002. As well as the EU Mark, the Respondent owned and used a Greek trade mark no. D161493 for SEA SATIN MARKET from 2002 to 2012. The Complainant has no business of her own on Mykonos. Her application for the three Greek Marks in 2017 reflecting the name “Sea Satin Market” that the Respondent “had the right to use” shows that the Complainant intended to harm the Respondent’s professional interests arising from their difficult divorce. The Complainant did not inform the Respondent about these applications even though the Licence was in force at the time. She intended to use these trade marks to confuse customers. For that reason, the Respondent was forced to apply for his own trade mark. The Order was based on the Respondent’s use of a smaller font for the term “by Gryparis” than that used for the “sea satin” part of the mark whereas the Respondent uses the entire mark in an identical font on the website at the disputed domain name. Furthermore, the Respondent’s last name is an obvious part of the Respondent’s mark, which sufficiently differentiates his mark from the Complainant’s marks, and so there is no possibility of customer confusion. The Complainant’s claim that she was known by name during her marriage is “unsafe” as only the Respondent has developed the business on Mykonos. The Respondent was first to request registration of the disputed domain name and the Respondent is therefore the legitimate owner under the principle of first come, first served. The Complainant cannot prove “real use” of her trade marks for her business. She has no restaurant, shop, bar or products on which to use her trade marks. The Respondent needs to be able to use the disputed domain name in order receive online reservations for his restaurant. The Respondent has not registered her three Greek trade marks in class 38 relating to digital, electronic, Internet services, etc. Therefore, the Complainant had not acquired any prior rights concerning the disputed domain name and its use. The Complainant’s actions in applying for the Greek Marks, opposing the Respondent’s applications and filing this proceeding of themselves amount to bad faith. The Respondent requests that his lawyer be registered as the registrant of the disputed domain name on behalf of the Respondent. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; -the Respondent has no rights or legitimate interests in respect of the disputed domain name; and -the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the mark SEA SATIN by virtue of her Greek registered trade mark for this term mentioned in section 4 above. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the phrase “by Gryparis” is insufficient to avert a finding of confusing similarity. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests It is unnecessary for the Panel to consider this element in view of its conclusion under the third element below. C. Registered and Used in Bad Faith As can be seen from the level of detail set out in the factual summary in section 4 above, the background to this dispute is far from straightforward. The gist is that the parties formerly operated the Sea Satin Restaurant on Mykonos. After their marriage broke up, the Respondent took over the business himself but assigned his EU Mark to the Complainant who in turn granted him the Licence. Since the Licence ended in 2018, the Complainant obtained two orders of the Greek court blocking the Respondent from using the term “Sea Satin” based on the EU Mark as well as on the Greek Marks which she had registered in 2018. It appears that, as a defensive move following the Complainant’s court application, the Respondent changed the name of the restaurant to “Sea Satin By Gryparis” (“the New Name”), i.e., adding by his own name. As part of this move, the Respondent registered the disputed domain name and also applied to register the New Name as a Greek trade mark, which application is under opposition by the Complainant. Aside from somewhat artificial complaints levelled by the Complainant against the Developer which disregard the obvious fact that the Developer was acting as agent for the Respondent, the main dispute between the Parties has revolved around whether use of the New Name infringed the Complainant’s trade marks and/or whether the disputed domain name was registered and used as part of a scheme to circumvent the orders of the Greek court. However, it is not the role of the Panel to assess whether the Respondent has infringed the Complainant’s trade marks or to interpret or enforce orders of the Greek court relating to trade mark infringement. These are all matters for the Greek courts. Under this third element of the Policy, the Panel’s only role is to assess whether, on balance, the Respondent acted in bad faith, i.e., that he possessed the relevant negative intent vis-à-vis the Complainant’s trade marks when registering and using the disputed domain name. But it is very difficult for the Panel to disentangle the Respondent’s motives given the long-standing and complicated nature of this dispute which extends well beyond the disputed domain name itself and in respect of which there are pending court and trade mark opposition proceedings. Furthermore, the Panel does not have the benefit of witness testimony, disclosure of documents or the other tools that are typically available to assist a court. Clearly the Respondent fervently believes he is entitled to use the New Name, not least because it incorporates his own name. He may be right or wrong about that from the point of view of trade mark infringement and/or compliance with the orders of the Greek court – as to which the Panel expresses no view. But the Panel does not consider that the circumstances are sufficiently clear to enable it to make a finding that the Respondent registered and used the disputed domain name in bad faith for the purposes of the Policy. As to the Respondent’s request that the disputed domain name be transferred into the name of his lawyer, that is a matter for the Respondent to arrange after the disputed domain name has been unlocked and is not part of the Panel’s role. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor Marina Perraki Isabelle Leroux
Presiding Panelist
Panelist
Panelist
Date: March 11, 2020
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