WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sennheiser electronic GmbH & Co. KG v. Jeff Holden, Holdenz
Case No. D2019-0796
1. The Parties
The Complainant is Sennheiser electronic GmbH & Co. KG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Jeff Holden, Holdenz, United States of America (“USA”), represented by Andrii Raietsky, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <senheiser.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2019. On April 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2019, 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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Response was filed with the Center on April 28, 2019. The Respondent sent email communications on April 9 and May 3, 2019. The Complainant sent an email communication on May 3, 2019, and submitted a supplemental filing on May 6, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 13, 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
In its Complaint the Complainant gives evidence that the Complainant was founded in 1945 by Mr. Fritz Sennheiser, selling, initially, voltmeters. It has since expanded into an international company with over 2,800 employees and manufacturing plants in Germany, Ireland and USA, as well as sales subsidiaries and research laboratories worldwide. It sells its products worldwide including in the USA where it has its headquarters in Connecticut and a production facility in New Mexico.
The Complainant now specializes in the design and production of a variety of audio products including; microphones, headphones, wireless technology, monitor systems, telephone accessories, aviation and office headsets, and all‑round audio solutions. Evidence as to the history and activities of the company is set out at annexes 4 and 5 to the Complaint. It has a “huge” sales and service network throughout the world.
The Complainant is the owner of a large trademark portfolio in respect of the mark SENNHEISER particularly in the European Union and USA. These marks are registered in classes relating to the Complainant’s commercial activities and in particular audio technology, and in a large number of countries. Excerpts from the registers are set out in annex 6 to the Complaint. All these registrations predate the date of registration of the disputed domain name on November 16, 2000. One such example is SENNHEISER, International trademark registration no. 670839, registered March 6, 1997.
The Complainant is also the owner of a large number of domain names incorporating the mark SENNHEISER, e.g., <sennheiser.com> and <sennheiser.net>. Printouts are exhibited at annex 7 to the Complaint. It also promotes its products on the website “www.sennheiser.com” as evidenced by the printout at annex 4 to the Complaint.
The Respondent who is an individual, in his Response, confirms that it does not sell headphones or electronics. He states that he obtained the disputed domain name as a memorial to a bulldog called “Sanh” or “Senh”.
There is no material conflict between the evidence adduced by the parties. The Panel therefore accepts both parties’ evidence as true and proceeds to determine the Complaint accordingly.
5. Parties’ Contentions
The Complainant submits;
i. It has trade mark rights in the mark SENNHEISER and that the disputed domain name is confusingly similar to the mark SENNHEISER save for the fact that the disputed domain name is spelt with one letter
ii. There is no evidence that the Respondent has any rights or interests in the mark SENNHEISER or in the term “senheiser” as used in the disputed domain name. It has not been authorized to use SENNHEISER.
iii. When registering the disputed domain name the Respondent was clearly aware of the Complainant’s rights in the mark SENNHEISER as a result of the Complainant’s worldwide trading activities and worldwide trade mark registrations including, in particular, in the USA where the Respondent is located.
iv. The misspelling of SENNHEISER as “senheiser” is an indication of bad faith.
v. The disputed domain name was registered for the purpose of sale to the Complainant at a “(highly) exaggerated price”.
vi. The Respondent’s website shows no content beyond the fact that disputed domain name is for sale.
The Respondent submits;
i. The disputed domain name is not confusingly similar. It consists of two different words “Senh” and “Eiser”. “Eiser” is an abbreviation of the German word “Bullenbeiser” meaning bulldog.
ii. The Complainant has failed to prove that the Respondent lacks rights or legitimate interest in the disputed domain name. The Respondent has rights arising from the fact that it was purchased as a memorial for a bulldog called “Sanh” or “Sehn”. “Senh” and “Eiser” have been joined to create “Senheiser”.
iii. There is no specific evidence that the Respondent acted in bad faith in registering the disputed domain name nor has engaged in a pattern of conduct of registering domain names in bad faith.
iv. The Respondent did not contact the Complainant to offer the disputed domain name for sale at EUR 44,000, but rather the Complainant used a third party service to solicit a valuation with respect to the disputed domain name.
v. The Respondent relies upon laches in that the Complainant has not objected to the disputed domain name in a timely manner taking into account that it was registered in 2000.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the evidence set out in section 4 above the Panel is satisfied that the Complainant owns trade mark rights in the mark SENNHEISER, and incidentally that these predate the registration of the disputed domain name in 2000.
The Panel is also satisfied that “senheiser” as used in the disputed domain name, i.e., spelt with a single letter “n”, is confusingly similar to the mark SENNHEISER as spelt with two letters “n”. It accepts the submission that the missing letter “n” is insufficient to distinguish the Respondent or any goods or services that might be offered under the disputed domain name from the Complainant.
Accordingly the Panel finds for the Complainant in respect of this element and finds that the Complainant has trade mark rights in the mark SENNHEISER which is confusingly similar to the disputed domain name <senheiser.com>.
B. Rights or Legitimate Interests
The Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It accepts the Complainant’s evidence that the Respondent has no trademarks or trading name corresponding to “sennheiser” or “senheiser” as used in the disputed domain name, nor trades using “sennheiser” or “senheiser”.
There is no evidence of any license or authorization for the Respondent to use the mark SENNHEISER or any confusingly similar variant. It is well established (for example WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1, as cited by the Complainant) that the mere registration of a domain name does not by itself give the owner any right or legitimate interest in respect of the domain name.
The Respondent’s counter submission is that the disputed domain name was apparently purchased as a memorial to a German bulldog called “Sanh” or “Senh” and that the disputed domain name is a combination of a name “Senh” and “eiser”, the latter being an apparent abbreviation of the word bulldog in German. The Panel notes that a cursory search relating to German bulldogs, as per the Panel’s general powers within the Rules, paragraph 10, reveals that the typical spelling for the German bulldog is “bullenbeisser”. The Panel’s difficulty in accepting the Respondent’s memorial claims as the basis for legitimate use and registration is that Respondent appears to have submitted in its Response multiple and/or misspelled variations of the claimed dog’s name, specifically “Sanh” and “Senh”. Furthermore, the disputed domain name does not consist of a combination of “Senh” and “eisser” or “beisser”, i.e., “senheisser” (with two “s”) or “senhbeisser”, but rather “senheiser”, which has only a single letter difference from the Complainant’s trademark. Even though, in the Panel’s view, that is conclusive in showing that the Respondent does not have rights or legitimate interests, the Panel also finds that registration of a domain name as a memorial to a dog is not itself evidenced by reference to a right or legitimate interest within the Policy, paragraph 4(a)(ii).
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits that bad faith is shown by the fact that the Respondent registered the disputed domain name when he was “clearly aware” of the Complainant’s prior trade mark rights, its USA business trading activity and also that it was registered for sale to the Complainant at a “(highly) exaggerated price”.
In summary the Respondent submits that the Complainant has adduced no evidence that the Respondent “proceeded in bad faith” at the date of registration. The Complainant relies upon the fact that it has been trading since 1945 and prior trademark registrations to submit that there was “no doubt” that the Respondent was aware of the Complainant’s rights at the date of registration.
In the Panel’s view, the fact that the Complainant is well-known internationally including in the USA and has been trading since 1945 with trademarks registered prior to the date of the disputed domain name supports the Complainant’s contention that the Respondent would have been aware of the Complainant’s rights at the date of registration of the disputed domain name.
The Complainant exhibits at annex 9 to the Complaint a screenshot from the disputed domain name which currently shows no content except to state that the disputed domain name “www.senheiser.com is for sale!”. Annex 10 is an extract from the Registrar’s site, GoDaddy which states; “senheiser.com is available: Minimum Offer [EUR] 44,507.74”.
The Respondent submits that at no time has the Respondent solicited the Complainant to purchase the domain name. Rather the site has been “parked” for the past 19 years and “kept alive”. The disputed domain name has not been used commercially or in competition with the Complainant. He confirms that the Parties have not spoken to each other about purchasing the disputed domain name.
The Panel takes the view that the offers for sale – even if “unprompted” by the Respondent, and generated by the registrar – contained in Annexes 9 and 10, taken with the Respondent’s knowledge of the Complainant’s rights means that the offers were inevitably directed at the Complainant. It is also clear that a minimum selling price of EUR 44,507.74 is well in excess of “out‑of‑pocket” expenses.
Accordingly the Panel finds that the Respondent has registered the disputed domain name “for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant ….. for valuable consideration in excess of the Respondent’s out‑of‑pocket costs….” within Paragraph 4(b)(i) of the Policy.
The Panel has considered the Respondent’s submission on laches. The disputed domain name has been registered for approximately 19 years and the Complainant’s trade mark rights which it relies upon pre-date that. The Complainant has not challenged the disputed domain name until the present Complaint.
The Panel notes that the Complainant’s representative in an email dated May 6, 2019, sought to make a supplemental filing in relation to laches where he indicated that the Complainant had only recently become aware of the disputed domain name so that laches does not apply; this matters not here.
The Panel therefore finds that the Complainant has successfully proved this element and that the Respondent registered and used the disputed domain name in bad faith.
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 <senheiser.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: May 30, 2019