WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sonorous Ses Ve Goruntu Sistemleri Sanayi Ticaret Anonim Sirketi v. Oguzhan Aksu, Sonorous Audiovisual Furniture GmbH - Deutschland
Case No. D2018-2951
1. The Parties
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 - Deutschland of Elmshorn, Germany, represented by Esche Schümann Commichau, Germany.
2. The Domain Names and Registrar
The disputed domain names <sonorous-audiovisual-design.com>, <sonorous-e-bussines.com>, <sonorous‑e-commerce.com>, <sonorous-elements.com>, <sonorous-home-furniture.com>, <sonorous‑moebel.com>, <sonorous-mood.com>, and <sonorousstore.com> are registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint and the amended Complaint were filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2018. On December 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 31, 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 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 January 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. The Respondent filed a response on January 24, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on February 14, 2019. 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.
4. Factual Background
Since its incorporation in Turkey in 2004, the Complainant has manufactured and supplied furniture and accessories for audio-visual systems under the mark SONOROUS.
The Complainant owns a number of registered trade marks which consist of the stylized word “SONOROUS” plus graphic elements, including Turkish trade mark No. 200406016, filed in March 10, 2004, in class 20 and International Registration No. 852823 designating many countries (including Germany), registered May 9, 2005, also in class 20.
The Respondent was incorporated in Germany in 2006.
From around 2008, the Complainant used <sonorous.com> (not one of the disputed domain names) for its main website, as well as email. The circumstances surrounding registration, ownership and control of this domain name are hotly disputed between the parties and this is discussed further in section 6C below.
The disputed domain names were registered on the following dates:
<sonorousstore.com>: January 29, 2013
<sonorous-moebel.com>: August 26, 2013
<sonorous-elements.com>: February 12, 2015
<sonorous-mood.com>: February 12, 2015
<sonorous-e-bussines.com>: October 23, 2015
<sonorous-e-commerce.com>: October 23, 2015
<sonorous-home-furniture.com>: April 12, 2016
<sonorous-audiovisual-design.com>: May 30, 2017
On June 19, 2018, without warning to the Complainant, the Respondent procured a change to the administrative details for <sonorous.com> with the result that the Complainant was no longer able to use it for its website or for email.
As of September 9, 2018, all of the disputed domain names resolved to websites which stated prominently: “We are Sonorous Germany” and which offered the Complainant’s products for sale.
On September 10, 2018, the Complainant filed a UDRP case against the Respondent in relation to <sonorous.com>. On November 12, 2018, the Respondent was found to have registered and used <sonorous.com> in bad faith and it was transferred to the Complainant. See Sonorous Ses Ve Goruntu Sistemleri Sanayi Ticaret Anonim Sirketi v. Oguzhan Aksu, Sonorous Audiovisual Furniture GmbH, WIPO Case No. D2018-2070 (“the <sonorous.com> UDRP Case”).
On or about November 30, 2018, the Respondent filed legal proceedings in Germany contesting the decision in the <sonorous.com> UDRP Case.
None of the disputed domain names were being used for active websites as of the date of the filing of this Complaint.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain names are identical or confusingly similar to the Complainant’s trade marks.
The Respondent lacks rights or legitimate interests in the relation to the disputed domain names.
The Respondent is a reseller of the Complainant’s products in Germany but without any proper distributorship relationship or written contract. Despite this, the Respondent describes itself as “Sonorous Germany” on its website.
Without the Complainant’s consent, the Respondent operated a website which was an old version of the Complainant’s website. As of September 9, 2018, this website could be reached via the disputed domain names as well as various other “sonorous” domain names registered by the Respondent.
The Complainant only became aware of the disputed domain names after the Respondent “attacked” the Complainant’s main website at “www.sonorous.com” including the email addresses of its employees, all of which used this domain name. This occurred on June 18, 2018, when the Complainant received an email from GoDaddy confirming the account change and which included reference to the Complainant’s managing partner plus the phrase “private message”.
Immediately thereafter, the Complainant’s website was shut down and the hundreds of email addresses using <sonorous.com> stopped working. This act seriously damaged the Complainant’s reputation. As soon as <sonorous.com> was forwarded to the Respondent’s website at <sonorous.gmbh>, the Complainant realised that “the German reseller” was responsible for the unlawful act and unsuccessfully tried to contact it.
The Complainant believes that the Respondent stole <sonorous.com> by hacking the Complainant’s registrant or administrative contact email address.
In the <sonorous.com> UDRP Case, the panel concluded that, while the Respondent may have been entitled to use <sonorous.com> as an authorised reseller of the Complainant’s products, such rights only applied insofar as they were not contrary to the interests of the Complainant, the legitimate trade mark owner. And that, by changing the administrative contact details of <sonorous.com> without prior notice to the Complainant, the Respondent “expelled” the Complainant from its website and from use of its related email addresses and the Respondent must have been aware of the effect that this would have on the Complainant’s business. The panel also noted that, shortly before changing the administrative contact details for <sonorous.com>, the Respondent also changed its corporate purpose in the German commercial register to enable it to trade in products not manufactured by the Complainant. The panel concluded that the above circumstances took the Respondent outside any potential safe harbour as a reseller for the purposes of the second element of the Policy.
The disputed domain names were registered and are being used in bad faith.
The panel’s view in the <sonorous.com> UDRP Case was that the Respondent hijacked <sonorous.com> for illegitimate purposes. The Respondent obviously registered the disputed domain names in this proceeding in bad faith as well.
A summary of the Respondent’s contentions is as follows:
The disputed domain names are not identical or confusingly similar to the Complainant’s trade marks.
The word element of the Complainant’s word-and-device trade marks is a descriptive, non-distinctive, dictionary term, which could not legally be registered as a word mark. The Complainant’s protection relates only to the combined word and device element and not the word alone.
There are many other trade mark holders with rights in the term “Sonorous”.
There is no evidence that the Complainant’s mark No. 85283, which is under a use obligation, has been used during the past five years. Therefore the Complainant cannot rely on it.
The words additional to “Sonorous” in the disputed domain names are sufficient to differentiate the disputed domain names from the Complainant’s trade mark, for various reasons.
The Respondent possesses rights or legitimate interests in the disputed domain names, which have not been registered or used in bad faith.
The Complainant misdescribes the relationship between the Complainant and the Respondent, especially in relation to <sonorous.com>.
The managing partner of the Complainant, who was present when the Respondent was incorporated, permitted the Respondent to use the name “Sonorous Audiovisual Furniture GmbH-Deutschland”.
The Complainant explicitly granted the Respondent and its managing director the right to use International Registration No. 85283 in Germany including within the Respondent’s company name and in domain names.
The Complainant also granted the Respondent the exclusive rights to distribute the Complainant’s products in Germany. The Respondent received written assurances that it would be supplied with the Complainant’s products indefinitely. The Respondent supplied these products to large German buyers, using the name “Sonorous Germany” and has invested heavily in its online presence. Since 2013, the Complainant has made it increasingly difficult for the Respondent to sell products in Germany by worsening the terms of supply in violation of written agreements. The Respondent suspects that the Complainant was motivated because of the Respondent’s excellent reputation and enormous success in Germany.
The Respondent never copied the Complainant’s website other than with the full consent and knowledge of the Complainant.
The Respondent holds better and prior rights to “Sonorous” than does the Complainant. The Respondent owns company name rights to the “Sonorous” under German law as well as the rights to its name and is accordingly entitled to continue holding and using the disputed domain names.
The Respondent is known among its customers at home and abroad under the name “Sonorous” as a highly successful exclusive distribution partner for “Sonorous” products for 12 years, with a better reputation than the Complainant itself. The Complainant only changed its corporate name to include the word “Sonorous” in 2012 and therefore the Respondent has older rights, especially because International Registration No. 85283 is void for non-use.
The Complainant’s trade mark registered in Turkey offers no territorial protection in Germany. Even if this trade mark does confer rights on the Complainant, the Complainant expressly permitted the Respondent to use the Complainant’s trade marks.
The Respondent has used, and intends to use, the disputed domain names solely as referral pages for its main domain name <sonorous.com>.
By mutual agreement, the Complainant registered <sonorous.com> in May 2008 for the Respondent as owner and agreed to its use by the Respondent. Any use by the Respondent of the website at <sonorous.com> has been with the knowledge and consent of the Complainant.
In fact, from May 2008, the Respondent granted the Complainant the right to use <sonorous.com> as a website on the basis that the Complainant would pay the costs of such use. Knowing this, the Complainant renewed the domain name three times while the Respondent remained its lawful registered holder. Now the Complainant falsely claims that it owns <sonorous.com>.
The Respondent did not “hack” or “steal” the Complainant’s domain names in 2018. The decision in the <sonorous.com> UDRP Case was flawed as it accepted the Complainant’s false and unsupported allegations, despite the fact that the Respondent disputed them. Accordingly, the Respondent has filed a lawsuit in German seeking to nullify the decision. The Panel is not bound by the earlier decision and should strongly question the Complainant’s submissions.
The Respondent, as the legitimate registered holder of <sonorous.com> since 2008, merely updated the information regarding his domain name by providing relevant information to GoDaddy, the registrar, which would never have approved an improper transfer.
Furthermore, the Complainant ordered the hacking of certain of the Respondent’s websites.
The Complainant has sought to obtain unlawful possession of the Respondent’s domain names. Even if the Complainant had any claims, these have expired due to the statute of limitations.
There is no bad faith use of the disputed domain names, because they are not currently in active use. Their only purpose was to redirect users to <sonorous.com>, which has been wrongfully transferred to the Complainant. Non-use of domain names cannot amount to use in bad faith; this can only apply where other negative aspects are present, none of which are present in this case.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are 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 names; and
- the disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement. The test for confusing similarity involves a relatively straightforward side-by-side comparison of the disputed domain names and the textual components of the trade mark to assess whether the mark is recognisable within the disputed domain name.
In the case of figurative trade marks, section 1.10 of WIPO Overview 3.0 makes clear that design or figurative/stylised elements which are incapable of representation in domain names are excluded from the comparison.
Accordingly, the Panel does not consider that any of the following factors raised by the Respondent are relevant to its consideration of the first element (though they are potentially applicable under the other elements): the descriptiveness of the text element of the Complainant’s figurative mark; the existence of third party trade marks for “Sonorous”; or the alleged failure of the Complainant to prove use of its mark.
The Respondent further seeks to distinguish each of the disputed domain names from the trade mark by reference to the alleged meaning conveyed by the additional terms included within each of the disputed domain names. However, see section 1.8 of WIPO Overview 3.0 to the effect that, where the relevant trade mark is recognisable within a 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.
In this case, the textual component of the trade marks is the word “SONOROUS” and this is readily recognisable within each of the disputed domain names. Indeed, it is the first and dominant term.
In the Panel’s view that is sufficient to satisfy the confusing similarity test in respect of each of the disputed domain names.
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 to consider this element in light of the Panel’s conclusion under the third element below.
C. Registered and Used in Bad Faith
The Complainant must prove both registration and use of the disputed domain names in bad faith.
The Panel will first consider the Respondent’s state of mind when registering each of the disputed domain names over the period January 2013 to May 2017 – in the context of the relationship between the Parties as presented to the Panel.
The Complainant simply describes the Respondent as “a reseller of the client’s products in Germany”, without any “proper” distributor relationship or written contract. Whereas the Respondent paints a very different picture of a relatively close relationship, under which the Respondent was the Complainant’s (allegedly very successful) exclusive distributor in Germany. The Respondent also refers to various written agreements between the parties.
Neither party has provided any contracts or correspondence evidencing the exact nature of their relationship and so the Panel has been left in the dark to some extent. However, based on the information before it, the Panel will assess as best it can the likelihood that the Respondent registered the disputed domain names in a bona fide manner for the purposes of the distributor relationship – or otherwise.
As to use of the disputed domain names, the Complainant has produced screenshots, not disputed by the Respondent, indicating that in September 2018 all of the disputed domain names resolved or redirected to websites offering the Complainant’s products under the prominent and arguably misleading strapline: “We are Sonorous Germany”.
However, this must be considered in light of the undisputed fact that, since its incorporation in 2006, the Respondent’s corporate name has been “Sonorous Audiovisual Furniture GmbH - Deutschland”, i.e., incorporating the Complainant’s “Sonorous” trade mark plus the word “Germany”. Arguably this name is equivalent to telling the world: “We are Sonorous Germany”. Whether or not the Complainant’s managing partner was actually present when the Respondent was incorporated, as the Respondent claims, nonetheless, based on the facts before the Panel, it is reasonable to infer that the Complainant may have acquiesced in the Respondent’s corporate name from the outset – as the Respondent contends. Indeed, and somewhat surprisingly, in the Complaint, the Complainant does not mention, let alone object to, the fact that the Respondent’s corporate name includes the Complainant’s trade mark.
The Panel also notes the finding as an undisputed fact in the <sonorous.com> UDRP Case that, for some 10 years from 2008, the Respondent was the registrant of <sonorous.com>, previously used by the Complainant for its main website (see further below). In the Panel’s view, this further supports the likelihood that the Complainant was well aware of the Respondent’s name and, also, that the relationship between the parties was closer than the Complainant has implied.
The Complainant is obliged to prove its case on the balance of probabilities – see section 4.3 of WIPO Overview 3.0. If the Complainant wished to establish that use of the disputed domain names as outlined above amounted to evidence that the Respondent originally registered the disputed domain names with a bad faith intent, despite the Complainant having arguably acquiesced in the adoption and use of the Respondent’s corporate name, then it ought to have explained why, including a more candid account of the distribution relationship as well as the provision of supporting evidence. Instead, the Complainant has downplayed the relationship and, indeed, has focussed its comments under the third element exclusively on the <sonorous.com> issue.
The Complainant also claims that the Respondent utilised an old version of the Complainant’s own website. This is denied by the Respondent. Again, the Complainant has provided no supporting evidence.
Accordingly, based on the limited information placed before the Panel, the Complainant has failed to satisfy the Panel that the manner in which the Respondent’s has used the disputed domain names indicates that it registered them in bad faith – rather than in a bona fide manner for the purposes of its distribution of the Complainant’s products within the ambit of the relationship between the parties.
The Panel turns next to the <sonorous.com> issue.
As mentioned in section 4 above, the panel in the <sonorous.com> UDRP Case concluded that the Respondent’s actions in June 2018 whereby it abruptly changed the administrative contact details for <sonorous.com> without notice, depriving the Complainant of its main corporate business website and related email accounts, amounted to registration of <sonorous.com> in bad faith.
The gist of the Complainant’s case under the third element is simply to recite the Panel’s conclusion in the <sonorous.com> UDRP Case and then to add that the same Respondent “obviously” registered the disputed domain names in bad faith as well.
In the Panel’s view, this conclusion does not automatically follow.
First, the Panel does not consider that the Complainant has provided a candid account of the background to the issue. The Complainant gives the impression that a German entity, having no connection with the Complainant other than being a reseller of the Complainant’s products, suddenly “hijacked” the Complainant’s domain name out of the blue. Whereas the Respondent suggests that, from at least May 2008, there was a prior agreement whereby the Respondent, as the ultimate owner of that domain name, permitted the Complainant to use it for its website subject to payment of the applicable costs.
While the Respondent’s version of events is not entirely clear either, nor is it backed up by any evidence, its assertion of a prior agreement receives at least some support from the finding that, for some 10 years from 2008, the Respondent was the registrant of <sonorous.com>.
The Panel adds that above comments are not intended in any way to condone the Respondent’s actions in June 2018, nor indeed to revisit the conclusion of the panel in the <sonorous.com> UDRP Case. The Panel is simply making the point that, if the Complainant wished to rely on the Respondent’s actions in taking control of <sonorous.com> in June 2018 as evidence of bad faith vis-à-vis the disputed domain names, it should as a starting point have given a full account of the relevant interactions between the parties regarding <sonorous.com>, including an acknowledgment that the Respondent had been the registrant of the disputed domain name since May 2008 and an explanation as to how this came about rather than a selective version of events as explained above.
Second, rather than reciting what it considered to be an “obvious” conclusion, the Complainant ought to have explained exactly why it considered that the Respondent’s actions in taking control of <sonorous.com> in June 2018 tainted the registration of the disputed domain names, all of which had been registered previously, with the first disputed domain name dating back to 2013. Does the Complainant claim that the Respondent registered the disputed domain names in bad faith as part of an attempt to exert more control over the Complainant’s trade marks in Germany than may reasonably have been expected in light of the parties’ distribution relationship? (For example, why did the Respondent need all of the various domain names it registered?) If that was the Complainant’s position, it was incumbent on the Complainant to clearly put such a case forward.
It is true that the Respondent says that it registered the disputed domain names purely to point to <sonorous.com>. But, in the Panel’s view, this does not automatically lead to a conclusion of bad faith intent vis-à-vis the disputed domain names – given that <sonorous.com> was apparently subject to a licence agreement between the parties, the details of which remain vague (which fact does not assist the Complainant).
For the above reasons, the Panel does not consider that the Complainant has proved on the balance of probabilities that the Respondent’s actions indicate that the Respondent registered the disputed domain names in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: March 20, 2019