The Complainant is Sonorous Ses Ve Goruntu Sistemleri Sanayi Ticaret Anonim Sirketi of Istanbul, Turkey, represented by Cagirgan Law Firm & IP Services Ltd., Turkey.
The Respondent is Oguzhan Aksu, Sonorous Audiovisual Furniture GmbH of Elmshorn, Germany, self‑represented.
The disputed domain name <sonorous.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2018. The Response was filed with the Center in German on October 23, 2018.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 29, 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 October 31, 2018, the Complainant filed a supplementary submission with the Center. In response to the Complainant’s additional filing, the Respondent filed a supplementary submission on November 5, 2018. The Center acknowledged receipt of the supplemental filings from both parties, and forwarded them to the Panel for its consideration.
The Complainant is a company with its registered seat in Turkey and since 2004 has been active in the field of manufacturing furniture for audiovisual equipment.
The Complainant owns various word and figurative SONOROUS trademark registrations around the world. According to the provided documents in the case file, the Complainant is, inter alia, the registered owner of the Turkish Trademark Registration No. 2004 06016 (registered on March 10, 2004) and International Trademark Registrations No. 852823 (registered on May 5, 2005) claiming protection for a large number of jurisdictions, including for Germany, where the Respondent is located.
The Respondent is a company from Germany, founded in 2007. According to Annex D and E as provided by the Respondent, the mere object of the Company was “trading with TV boxes and accessories manufactured by the company Sonorous, Turkey”, which means that the Respondent’s mere corporate dedication was to trade with the products of the Complainant. In line with this business purpose, the Respondent was active as an authorized distributor for the Complainant’s products in Germany for more than 10 years. For unknown reasons, however, business had become dissatisfactory for both sides for some time.
On June 4, 2018, the Respondent’s corporate purpose as published in the German commercial register has been extended to additionally “trade with further products not requiring permission” (cf. Annex F as provided by the Respondent).
The disputed domain name was initially registered on August 20, 2002 by a third party. It was acquired by the Complainant in 2006 (cf. Annex 1 as provided by the Complainant) and someday in 2008 (for unknown reasons) registered in the name of the Respondent. Even though the Respondent was named as the registrant of the disputed domain name, the Complainant’s managing partner was entered in the domain name register as the responsible administrative contact.
It is also undisputed that the website linked to the disputed domain name was created, operated and maintained as the main company website by the Complainant since 2006. This includes the use of respective email accounts for the Complainant’s management and employees. The costs for operating and maintaining the disputed domain name were directly paid by the Complainant to the concerned Registrar.
As can be seen in Annex B as provided by the Respondent, the first and main contact address on the website linked to the disputed domain name was the address of the Complainant in Turkey, literally described as the “Head Office”.
On June 19, 2018, hence only a few days after changing its corporate purpose in the commercial register (cf. Annex F as provided by the Respondent), the Respondent also changed the details of the administrative contact of the disputed domain name. By doing so, the Complainant was no longer able to use the disputed domain name and the respective email addresses of its management and employees. The Respondent did not inform the Complainant about the change of the administrative contact in advance.
At the time of the decision, the disputed domain name was not in active use.
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its SONOROUS trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is particularly argued that the Respondent cannot benefit from the Oki Data principles established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, although the Respondent is a reseller of the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith by changing the administrative contact details of the disputed domain name and excluding the Complainant from using the disputed domain name.
The Respondent requests the denial of the Complaint.
It argues that the Complainant has no relevant trademark rights that would prevail its own company name rights.
Furthermore, the Respondent argues that it has rights and legitimate interests in using the disputed domain name.
Finally, it is also argued that the domain name has not been registered and used in bad faith. In this respect, the Respondent particularly argues that the disputed domain name registration on behalf of the Respondent was made with the explicit consent of the Complainant. It is further argued that there has been no bad faith use of the disputed domain name. The Respondent is rather of the opinion that it is entitled to use the disputed domain name to the exclusion of the Complainant.
The language of the registration agreement of the disputed domain name is the English language. The Respondent alleged not to be able to submit its arguments in English language and, hence, requested to carry on the proceedings rather in German language. This, however, was opposed by the Complainant.
As the Parties did not agree on carrying on the proceedings in a different language than the language of the registration agreement, the Panel sees no sufficient justification to depart from English as the language of the current proceedings.
The Panel, however, notes that the Respondent was extraordinarily given the opportunity to render its submissions in German language. The Respondent made use of the opportunity.
In light of the above, the Panel determines in accordance with the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
The Panel notes that the Center received supplemental filings from both the Respondent and the Complainant.
Paragraph 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file an additional submission without an explicit request by the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
However, the Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional or late-filed submissions.
In this case, the Panel sees no reason not to take the supplemental filings into account.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
The Panel finds that the disputed domain name is identical to the SONOROUS trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various SONOROUS trademark registrations in Turkey since 2004 and in many further jurisdictions as of 2005.
The disputed domain name is identical to the Complainant’s SONOROUS trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
The Panel further finds that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file evidence or make convincing arguments to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
It is undisputed that the disputed domain name was operated under control of the Complainant for more than 10 years. It is further undisputed that it was the Complainant who created, operated and maintained the website linked to the disputed domain name (including all related email accounts).
It is also undisputed that the Respondent was at least at one point an authorized reseller for the Complainant’s products. Hence, the Respondent may have – under certain circumstances – been entitled to use the disputed domain name.
However, it is the Panel’s view that any right or legitimate interest of the Respondent may go only so far as it is not contrary to the interest of the Complainant, who is the legitimate trademark owner and the manufacturer of the products, sold by the Respondent under the Complainant’s trademark SONOROUS.
By changing the administrative contact details of the disputed domain name without any prior notice to the Complainant, the Respondent deliberately expelled the Complainant from using its well-established main corporate website, including the use of all related email addresses by its management and employees. In view of the Panel, the Respondent must have been fully aware of the effect of such conduct on the Complainant’s business operated via the website linked to the disputed domain name, particularly with regard to the sudden exclusion of using its email accounts.
The Panel cannot conceive of any rights or legitimate interests that could justify the Respondent’s conduct.
In particular, the Panel does not share the Respondent’s view that it has prevailing company name rights. It is undisputed that the company of the Respondent was founded after 2007 and, hence, several years after the registration of SONOROUS as a trademark by the Complainant in Turkey and many other jurisdictions, including in Germany. Additionally, the Panel notes that, although the Respondent’s company name includes the Complainant’s SONOROUS trademark and was commercially established with the consent of the Complainant, the only permitted company purpose of the Respondent was according to the commercial register the trade of SONOROUS products manufactured by the Complainant (cf. Annexes D and E as provided by the Respondent). The Panel concludes that any granted right to the Respondent concerning the use of the SONOROUS trademark is, hence, limited to the distribution of the Complainant’s products in Germany. In view of the Panel, any use of the SONOROUS trademark, including the use of the disputed domain name, which goes beyond or is even contrary to its corporate purpose, takes the Respondent out of any conceivable safe harbour.
In light of this, the Panel particularly concludes that excluding the Complainant from its ongoing use of the disputed domain name as its well-established corporate website (including exclusion from all related email accounts) without any prior notice is outside of any conceivable rights or legitimate interests of the Respondent in the disputed domain name.
In support of this assessment, the Panel further notes that shortly before changing the administrative contact details of the disputed domain name (with the effect of disrupting the Complainant’s business), the Respondent also changed its corporate purpose in the commercial register to the extent that the Respondent will now also trade products not manufactured by the Complainant without changing its company name, which still comprises the Complainant’s trademark SONOROUS (cf. Annex F as provided by the Respondent). In view of the Panel, this further indicates that the Respondent quite deliberately expelled the Complainant from using the disputed domain name and intends to start selling other products than the products of the Complainant under its current company name. The Panel is convinced that this takes the Respondent all the more out of any safe harbour for purposes of the second element, particularly in light of the Oki Data principles established in Oki Data Americas, Inc., supra, which require selling only the trademarked goods, not the goods of competitors of the complainant.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel notes that the disputed domain name is registered with the Respondent since at least 2008, though the Complainant’s managing partner was in 2008 also listed as the administrative contact for the disputed domain name registration. The Panel therefore believes that this registration happened with an explicit or at least implicit consent of the Complainant pursuant to an arrangement between the Parties in 2008. Hence, it is in view of the Panel not possible to assess a bad faith registration by the Respondent in 2008.
However, the Panel takes note of the WIPO Overview 3.0 and previous decisions on the assessment of this element under the Policy. In this regard, the Panel notes that the scenarios of bad faith registration and use delineated in the Policy, paragraph 4(b) are non-exhaustive. See WIPO Overview 3.0, section 3.1.3. According to sections 3.2.1 and 3.9 of the WIPO Overview 3.0, a panel may also consider circumstances with no credible explanation for the respondent’s behaviour and other indica “generally suggesting that the respondent had somehow targeted the complainant”.
The Panel notes the reasoning of the panel in Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D2004-0955, a case with similar facts to those of the present case, where the respondent acquired ownership of the domain name from the original registrant “through the manipulation of password access” and “changed the ownership records for the Domain Name covertly, without any notice to the rightful owner”, thus depriving “[the complainant] of access to the domain name and website it had created and maintained for more than 10 years”. In the present case, the Respondent changed the administrative contact details of the disputed domain name in June 2018 without consulting or even informing the Complainant, thus changing the power of control over the disputed domain name and expelling the Complainant from using its longstanding main corporate business website and the related email accounts.
Having changed the administrative contact details of the disputed domain name and having expelled the Complainant from continuously using its corporate website is in the Panel’s view equivalent to an interference with the Complainant’s trademark rights by a new registration of a domain name comprising the Complainant’s SONOROUS trademark in circumstances that indicate bad faith behaviour. See WIPO Overview 3.0, section 3.9.
This assessment is further supported by the fact that the Panel cannot conceive of any reasoning for the Respondent’s behaviour other than targeting and disrupting the Complainant’s business. The Respondent was not able to provide any convincing argument that could justify its behaviour. Expelling the Complainant without prior consulting or notice from using the website linked to the disputed domain name (and consequently also from using the related email accounts of all employees), while the Respondent was fully aware that the disputed domain name and the email accounts were exclusively operated and used by the Complainant for more than 10 years, is in view of the Panel compelling evidence of the Respondent’s bad faith intention.
In light of all facts provided in the case file, the Panel is of the opinion that the Respondent hijacked the disputed domain name registration for illegitimate purposes.
The fact that the disputed domain name is currently not actively used does not change the Panel’s finding of bad faith registration and use in the present case.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sonorous.com>, be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: November 12, 2018