Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

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, and Registrar's database, Filipe Pinto, an individual with address at Rua Principal no. 900, Bidoeira de Cima, P 2400-852 Leiria, Portugal, (the "Respondent").

The domain name at issue is <sonae.org>. The Registrar is Registrars.com, (the "REGISTRAR"), 475 Sansome Street, San Francisco, CA 94111, USA.

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 20, 2000, in hardcopy.

The Complainant elected to have the dispute decided by a single-member Administrative Panel and made paid the required fees, as informed in item XI. -Payment - of the Complaint.

On December 11, 2000, the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.

The Respondent did not 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. José 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 24, 2001, the registrar confirmed, that the domain name in dispute was registered through the registrar, that the "current registrant" is the Respondent, and that the domain name is currently under registrar-lock in the Shared Registry Server pending arbitration.

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, being also the language of the registration agreement.

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 proving that owns more than 15 trademarks and service marks that contain the word "sonae".

These marks are registered in different classes and present 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 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>.

(1) The domain name <sonae.org> 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.org> domain name and Complainant’s "sonae" mark, the addition of the gtld suffix ".org", 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.org> 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 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.org> 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 would use the domain name: currently the web site is only referring to the registrar through which the domain name was registered.

(3) The <sonae.org> 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) 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.

(c) the reservation of the domain name <sonae.org> prevents the owner of the trademark and trade name "sonae" to use it as a Global Top Level Domain.

(d) 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.

(e) the reservation of the domain name <sonae.org> 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

(f) the reservation of the domain name <sonae.org> constitutes a false representation of legitimate link between the Complainant and the Respondent;

(g) the use of the domain name <sonae.org> 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;

(h) the Respondent tarnishes the prestige of the Complainant and its subsidiaries by maintaining a web site that does not work.

Duly notified of the Complaint, the Respondent did not answer to it.

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:

Being that the particle "org" 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.org>. Therefore, the requirement of Paragraph 4.a.(i) is fulfilled.

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.

The domain name <sonae.org> 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 would use the domain name.

The Respondent has not 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.

On this basis, this Panelist concludes that the Respondent has no legitimate interest in the domain name <sonae.org>. Therefore, the requirement of Paragraph 4.a.(ii) is fulfilled.

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.org> diverts customers from the Complainant’s site and may cause confusion concerning the location of the Complainant’s sites by the general public.

The use of the domain name <sonae.org> by a third party could disrupt the Complainant’s business and cause substantial confusion among the public trying to reach the web sites of the Complainant;

The Respondent tarnishes the prestige of the Complainant and its subsidiaries by maintaining a web site that does not work

For all the foregoing reasons, this Panelist arrives to the conclusion that the Respondent has registered and has been using the <sonae.org> 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.org> be transferred to the Complainant.

José Pio Tamassia Santos
Sole Panelist