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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SONAE S.G.P.S., S.A. v. Josй Alberto Oliveira
Case No. D2000-1429
1. The Parties
The Complainant is SONAE S.G.P.S., S.A. a company based in Portugal, with its place of incorporation and principal place of business at Lugar do Espido, Via Norte, P 4472-909 Maia, Portugal, (the "Complainant"). Respondent is, according to the documentation enclosed to the Complaint, Josй Alberto Oliveira, an individual with address at Apartado 4773 Porto, P 4013-001 Porto, Portugal, (the "Respondent").
The Respondent address is 2520 SW 22nd Street - Suite 2-145 Miami, FL 33145 US, according to the present information from NSI’s Whois database.
2. The Domain Name and Registrar
The domain name at issue is <sonae.net>. The Registrar is Network Solutions, Inc. NSI (the "REGISTRAR"), 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Sonae on October 19, 2000, by email and on October 23, 2000, in hardcopy.
The Complainant elected to have the dispute decided by a single-member Administrative Panel and paid the required fees, as informed in item XI. -Payment - of the Complaint.
On December 1, 2000, the registrar confirmed that the domain name in dispute was registered through the registrar, that the "current registrant" is the Respondent, that Network Solutions' 4.0 Service Agreement is in effect for this register and that the domain name is in "Active" status.
The Complaint was amended on December 11, 2000, by the Complainant, for correcting the choice of jurisdiction due to the change in Respondent’s contact information, this amendment was resent by the Center to the parties.
On December 11, 2000, the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.
The Respondent sent e-mails to the Center on December 11, 14 and 26, 2000, and on January 4, 2001, asking for orientation about how to proceed, and expressing its revolt against the Administrative Procedure commenced against it.
The Respondent did not formally answer to the Complaint, and in consequence the Center sent to the parties in January 4, 2001, the Notification of Respondent Default.
On January 24, 2001, the Center appointed Mr. Josй Pio Tamassia Santos as the single member of the Administrative Panel (the "Panelist"), after having received his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, and, on the same date, notified the parties of this appointment.
On January 29, 2001, the Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules ") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, which is also the language of the registration agreement.
4. Factual Background
The Complainant is SONAE S.G.P.S., S.A., a company based in Maia, Portugal, the largest non-financial company listed on the Portuguese Stock Exchange and a holding company composed by six sub-holdings, active in the areas of wood based products, retailing, real estate, telecommunication, joint ventures and tourism.
The trademark upon which the Complaint is based is "sonae". The Complainant attached copies of trademark registrations proving that itself and its subsidiaries own more than 15 trademarks and service marks that encompassing the word "sonae".
These marks are registered in different classes and feature the word <SONAE> alone or with variations, among which can be found: "sonaepan", "eurofood by Sonae", "universo sonae", "sonaelan", "sonaefloor", "clube de produtores sonae" and "sonaecom".
The Complainant also enclosed documents proving trademark and service mark requests for the following names: "telecom da sonae", "sonae multimidia" and "sonaemidia".
The expression "sonae" is also the main part of the Complainant's trade name, and it has been used as its registered mark since 1959, and today many of its subsidiaries’ company names in Portugal and abroad use the word "sonae" in their company name.
Complainant also uses its "sonae" mark on Complainant’s principal web sites, located at <sonae.pt> and <sonae.com>.
5. Parties' Contentions
Complainant contends that:
(1) The domain name <sonae.net> is identical, and therefore confusingly similar to, Complainant’s "sonae" mark, because incorporates fully Complainant’s SONAE mark being the only difference between the <sonae.net> domain name and Complainant’s "sonae"mark, the addition of the gTLD suffix ".net", thus satisfying the requirement of Paragraph 4.1.(i) of the Policy.
(2) Respondent has no rights or legitimate interests in respect of the <sonae.net> domain name, because of the following facts:
(a) the said domain name is not being offered with a bona fide offering of goods and/or services under the name "sonae";
(b) the Respondent has never been and is currently not identified by the name "sonae";
(c) the Respondent does not conduct any legitimate private, commercial or non-commercial business activity identified with the word "sonae" or with any other word or phrase similar with the word "sonae" at this moment nor before;
(d) the Respondent has never registered any trademark, service mark trade name or service name containing "sonae";
(e) "sonae" is considered a well-known trademark and service mark in Portugal;
(f) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, service marks or trade names or to apply for or use any domain name incorporating those trademarks, service marks and/or trade names;
(g) "sonae" is an invented word formed by the initials of the words composing the Complainant’s ancient corporate name "SOciedade NAcional de Estratificados": it does not have any meaning in English or in Portuguese (which is the Respondent’s mother tongue). The word <sonae> is distinctive and has not acquired any secondary meaning;
(h) the use of the word "sonae" in the domain name can only be interpreted as a deliberate attempt to provoke a connotation with SONAE S.G.P.S., S.A. and its reputation in the sectors where it is active;
(i) the domain name <sonae.net> has never been used for an Internet service nor for an active web site: the domain does not resolve in a web site and has no other on-line presence. Additionally, there is no evidence that a web-site is in the process of being established which will use the domain name as a web-site as the domain is showing for months the "under construction" message in Portuguese ("site em construção").
(This condition informed by the Complainant, at the time de Complain was filed is now modified, and a single page already exists.)
(3) The <sonae.net> domain name has been registered and is being used in bad faith, because:
(a) the Respondent does not conduct any legitimate private, commercial or non-commercial business activity identified with the word "sonae" or with any other word or phrase similar with the word "sonae" at this moment nor has done so before;
(b) by giving no street address and having a fax number in the United States (his phone number is a Portuguese mobile phone number), the Respondent has taken deliberate steps to ensure that its true identity cannot be determined.
(c) The Respondent, domiciled in Portugal, is perfectly aware and has prior acknowledgement of the strong and widely known reputation of "sonae" as a trade name, service mark and trademark in the light of the fact that SONAE S.G.P.S., S.A. as an economic group accounts for more than 4,5% of the Portuguese GNP, and is active in nearly all the of sectors of the Portuguese economy, as well as in the rest of Europe, North America, South America and Africa. Due to this fact, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the name "sonae" and be unaware of this fact.
(d) the reservation of the domain name <sonae.net> prevents the owner of the trademark and trade name "sonae" to use it as a Global Top Level Domain.
(e) the Respondent chose "sonae" as domain name with the sole purpose to connote with SONAE S.G.P.S., S.A. and/or the "sonae" trademarks and service marks.
(f) the reservation of the domain name <sonae.net> diverts customers from the Complainant’s site and complicates the location of the Complainant’s sites by the general public. The fact of providing no reference to a bona fide use of the domain name confuses web surfers and prospective clients as a circumstance of bad faith
(g) the reservation of the domain name <sonae.net> constitutes a false representation of legitimate link between the Complainant and the Respondent;
(h) the use of the domain name <sonae.net> by a competing authority could disrupt the Complainant’s business and cause substantial confusion among the public trying to reach the web sites of the Complainant;
(i) the Respondent tarnishes the prestige of the Complainant and its subsidiaries by maintaining a web site that does not work.
Respondent did not formally answer to the Complaint:
Duly notified of the Complaint, the Respondent did not formally answer to it.
The emails sent to the Center only presented complaints about the fact that someone was trying to get its domain, and that it had no money to contract lawyers to defend it.
The Respondent also said that it spent a lot of money advertising and promoting its agency, however, not a single copy of this alleged promotion or any document showing these preparations for a legitimate use of the domain name were presented.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points:
"4.a.(i) Identity or Confusing Similarity"
Given that the particle "net" is an attribute of the gTLD, common to all the domain names under this TLD, it is beyond question that the trademark SONAE is identical to the domain name <sonae.net>. Therefore, the requirement of Paragraph 4.a.(i) is fulfilled.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
The word ‘sonae’ is not part of the name of the individual registering the <sonae.org> domain name nor has the Complainant licensed or otherwise permitted the Respondent to use any of its trademarks, service marks or trade names or to apply for or use any domain name encompassing those trademarks, service marks and/or trade names.
Also, the Respondent has not formally answered the complaint giving any basis to a right or legitimate interest in respect to the use of the phoneme "sonae" as a domain name.
The Respondent did not prove that conducts any legitimate private, commercial or non-commercial business activity identified by the word "sonae" or with any other word or phrase similar with the word "sonae" at this moment nor before.
On this basis, this Panelist concludes that the Respondent has not a legitimate interest in the domain name <sonae.net>. Therefore, the requirement of Paragraph 4.a.(ii) is fulfilled.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
The Respondent, being based in Portugal, should certainly be perfectly aware and should have prior awareness of the strong and widely known reputation of "sonae" as a trade mark and a trade name.
The reservation of the domain name <sonae.net> diverts customers from the Complainant’s site and may cause confusion to the general public concerning the location of the Complainant’s sites.
The reservation of the domain name <sonae.net> may suggest a false relationship between the Complainant and the Respondent;
The use of the domain name <sonae.net> by a competing third party could disrupt the Complainant’s business and cause substantial confusion among the public trying to reach the web sites of the Complainant;
For all the foregoing reasons, this Panelist arrives to the conclusion that the Respondent has registered and has been using the <sonae.net> domain name in bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is fulfilled.
Complainant has proved that the domain name is identical to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith.
Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name <sonae.net> be transferred to the Complainant.
Josй Pio Tamassia Santos
Dated: February 8, 2001