WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunfab Hydraulics Aktiebolag v. Domain Admin / Seyit Yilmaz
Case No. D2019-0873
1. The Parties
The Complainant is Sunfab Hydraulics Aktiebolag, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Domain Admin, Turkey / Seyit Yilmaz, Turkey.
2. The Domain Name and Registrar
The disputed domain name <sunfabhydraulic.com> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2019, the Registrar sent its 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 April 29, 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 May 3, 2019. On the same day, the Center requested clarification on the Registrar information included in the amended Complainant. On May 6, 2019, the Complainant submitted an amendment to the Complaint through email communication.
The Registrar confirmed that the language of the registration agreement is in Turkish, whereas the Complaint was submitted in English. On May 6, 2019, The Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on May 7, 2019, arguing in favor of English being the language of proceedings. No response was received 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 May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. A substantive communication was received from the Respondent on May 21, 2019, containing counter arguments to the Complaint. The Center asked for verification from the Respondent if it wanted this relevant communication to be accepted as the Response. The Respondent confirmed, thereby the Response was filed with the Center on May 21, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on May 31, 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
The Complainant is a Swedish technological company, which was founded in 1925 and is active in the field of hydraulics, particularly hydraulic pumps and motors. It has subsidiary companies in Germany, France, United Kingdom, Spain and United States of America and cooperates with distributors all over the world.
The Complainant is the owner of the trademark SUNFAB, which is registered as a trademark in many jurisdictions worldwide (see Annex 4 to the Complaint), e.g., United States Trademark Registration No. 73144164 (registered on December 5, 1978), and International Trademark Registration No. 1021523 (registered on October 23, 2009), all of them covering protection for hydraulic pumps and motors, as well as parts and components therefor (as protected in class 7).
The Complainant further owns and operates various domain names like “www.sunfab.com”.
The disputed domain name was created on August 28, 2018.
The Respondent is an individual from Turkey.
As evidenced by the Complainant (cf. Annex 5 to the Complaint), the Respondent offered various hydraulic pumps and motors at the website linked to the disputed domain name by indicating that the offered products are self-manufactured and exported to more than 40 countries.
Prior to initiation of the administrative proceedings, the Complainant tried to solve the dispute amicably by sending a cease-and-desist letter and asking for a transfer of the disputed domain name at no costs. This approach was refused by the Respondent. However, the Respondent indicated in his communication with the Complainant that he would be willing to transfer the disputed domain name in return for 4 Bitcoin (which is currently equivalent to around EUR 30,000.00), arguing that that he is earning EUR 2,500.00 – 3,000.00 per month with his trade activities on the website linked to the disputed domain name (cf. Annex 7 to the Complaint).
At the time of the decision, the disputed domain name resolves to an active website offering information on solar energy under the title “Sun & Fab Solar Hydraulic Energy”.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its SUNFAB trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademark, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent apparently tries to gain illegitimate benefits by freeriding on the goodwill of its SUNFAB trademark.
The Respondent requests the denial of the Complaint.
In its email communication of May 21, 2019, the Respondent alleges that he has invested significant time and effort in creating the website linked to the disputed domain name and that he is therefore willing to transfer the disputed domain name only in return of reasonable consideration. Furthermore, the Respondent is indicating that, should the disputed domain name be transferred to the Complainant as a result of these administrative proceedings, he will register further domain names comprising the Complainant’s SUNFAB trademark.
6. Discussion and Findings
6.1. Language of the Proceedings
Although the language of the registration agreement of the disputed domain name is Turkish, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and to request the submission of costly and time-consuming translations of documents by the Complainant. First, the Respondent failed to raise any objection to the Center’s communication regarding the language of the proceedings, although communicated in English and Turkish. Additionally, as can be seen by the documents provided by the Complainant (cf. Annex 7 to the Complaint), the Respondent fluently communicated with the Complainant in English prior to these administrative proceedings. The Panel concludes that the Respondent is apparently well capable of reading and writing in English. Finally, the Panel notes that the Respondent made use of its right to respond to the Complaint in Turkish language.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.
Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
6.2. Substantive Issues
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 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark SUNFAB by virtue of a large number of trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent appears to be located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it fully incorporates the mark SUNFAB. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the dictionary term “hydraulic” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s SUNFAB trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any 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 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 any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s SUNFAB trademark in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In this regard, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
The Panel particularly concludes that the Respondent’s website linked to the disputed domain name did not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized provider of the Complainant’s products in Turkey. In view of the Panel, this takes the Respondent out of any conceivable safe harbour for purposes of the second element.
The Panel is rather convinced that the Respondent is well aware that the composition of the disputed domain name carries a risk of implied affiliation or endorsement (cf. section 2.5.1 of the WIPO Overview 3.0) in relation to the Complainant’s products and its SUNFAB trademark.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel believes that the Respondent deliberately attempted to freeride on the goodwill of the Complainant’s SUNFAB trademark, for illegitimate commercial gain and to disrupt the Complainant’s business. The Panel is particularly convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.
The Panel further believes that the Respondent’s attempt to sell the disputed domain name to the Complainant in return for 4 bitcoins (which is currently equivalent to almost EUR 30,000.00) is another indication for the Respondent’s ill intentions.
Also, the Panel assesses the Respondent’s threat that it will register further domain names comprising the Complainant’s trademark, should he not receive the requested payment, as another strong indication for bad faith registration and use.
The fact that the disputed domain name currently resolves to a website offering solar technology with references to hydraulic energy does in view of the Panel affirm the finding of bad faith.
All in all, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent, not related to the SUNFAB trademark owned by the Complainant. The Panel is rather convinced that this is a typical cybersquatting case, which the UDRP was designed to combat.
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 <sunfabhydraulic.com> be transferred to the Complainant.
Date: June 13, 2019