WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services Case No. D2008-1907 1. The Parties
The Complainant is Sonae SGPS, S.A., of Maia, Portugal, represented by J. Pereira da Cruz, S.A., Portugal.
The Respondent is Luso Digital - Web Hosting Services, of Porto, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SARL. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on December 15, 2008 and by hardcopy on January 6, 2009. On December 17, 2008, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the disputed domain name. On December 17 and 19, 2009, Gandi SARL 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 3, 2009.
The Center appointed José Mota Maia as the sole panelist in this matter on February 11, 2009. 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
Beginning as a small to medium business focused on the area of wood derivatives, SONAE is now the largest private group in Portugal and its name derives from de original name of the company created on August 19, 1959: SOciedade NAcional de Estratificados (National Company of Stratified Wood).
In 2007, the company Sonae Capital was created and included in the Sonae group, which started to be quoted on the Portuguese Stock Exchange (PSI20). The creation of this company and its appearance on the market was greatly publicized in Portugal.
The SONAE trademark is the subject of a large number of registrations. 5. Parties' Contentions A. Complainant
Concerning the first test under the Policy, the Complainant contends that the disputed domain name is confusingly similar to trademarks in which it has rights. Details of these trademarks have been provided to the Panel.
Concerning the second test under the Policy, the Complainant submits that the Respondent has neither rights nor legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not known under the name Sonae Capital.
According to the Complainant, the Respondent intentionally registered the disputed domain name in order to benefit from the Complainant's reputation by creating confusion with the SONAE trademark.
The Complainant also submits that during correspondence with the Respondent, the latter was totally unwilling to resolve the situation and mentioned that it intended to transfer the disputed domain name to third parties by means of offers. This attitude can clearly be confirmed through the website "www." where "domain for sale" expressly figures. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To qualify for cancellation or transfer of the domain name, the Complainant must prove each of the elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decision were based upon the complainant's assertions and evidence, as well as reasonable inferences draw from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Köstritzer Schwarzbierbrauerei GmbH & Co. v. Alexandr Smirnoff, Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant's favour solely based on the Respondent's default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true and meet the requirements of the Policy. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piercing, Inc. v. Garwood S. Wilson, Sr. The Mudjackers, WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates identically the Complainant's trademark SONAE.
Furthermore, the addition of the suffix ".com" is for registration purposes only, being a requirement of the Internet domain name system, and does not serve as a distinguishing feature for trademark purposes. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112.
In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark SONAE in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration.
Accordingly, the Complainant has satisfied the requirements of the first element of the Policy. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name, attention may be paid to the following circumstances in particular but without limitation:
(i) whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
(ii) whether the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
(iii) whether the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence to show that the Respondent was acting in pursuant of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant's widely known trademark SONAE, the Respondent must in all likelihood have known, when registering the disputed domain name that it could not claim to any such rights or interests.
There is no evidence that the Respondent has been commonly known using the disputed domain name in dispute.
Also the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering goods or services.
Therefore, for all the above reasons the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts which constitute evidence of bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Bank v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
by using the domain name, the respondent has intentionally attempted to attract, for commercial gains, internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
Based on the evidence provided in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is attempting to trade on the Complainant's valuable goodwill.
Again, by registering and using the disputed domain name incorporating the Complainant's SONAE trademark, the effect is to mislead Internet users and consumers into thinking that the Respondent is, some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation.
Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
The Panel also agrees with the Complainant's contention that the disputed domain name would appear to have been registered primarily for the purpose of selling the domain name registration. This tends to suggest bad faith on the part of the Respondent. See paragraph 4(b)(i) of the Policy.
Again, registering the disputed domain name comprising the Complainant's well-known and widely established trademark also has the effect of disrupting the Complainant's business, which, for the purposes of the Policy, is also similar to one of the prescribed indications of bad faith on the part of the Respondent. See paragraph 4(b)(iii) of the Policy.
Likewise, the failure by the Respondent to reply to the Complainant's Complaint or otherwise take part in these proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.
Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
José Mota Maia
Sole Panelist
Dated: February 25, 2009
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