WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sonae SGPS, S.A. v. Inhyo Ahn, Mirine Co. Ltd.

Case No. D2014-0613

1. The Parties

Complainant is Sonae SGPS, S.A. of Maia, Portugal, represented by J. Pereira da Cruz, S.A., Portugal.

Respondent is Inhyo Ahn, Mirine Co. Ltd. of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <sonae.net> (the "Domain Name") is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 16, 2014.

The Center appointed Clive L. Elliott QC as the sole panelist in this matter on May 26, 2014. 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

According to Registrar's database, the Domain Name was registered on December 6, 2004.

5. Parties' Contentions

A. Complainant

Complainant states that Sonae SGPS, S.A. ("Sonae Group") was founded in 1959, in Maia (north Portugal) and that during its first twenty years of business it developed as a small to medium size business, focusing on the area of wood derivatives.

Complainant contends that Sonae Group is now the largest private group in Portugal and claims that its name is derived from the original name of the company created on 19th August 1959, being Sociedade Nacional de Estratificados, SARL (National Company of Stratified Wood).

By way of background to its company structure, Complainant explains that during the 1980s, Sonae Group experienced a period of growth and expanded its operation with the acquisition of a chain of supermarkets, launching the first hypermarket in Portugal. Following that Sonae Real Estate was created with its main objective being the construction of shopping centres next to its Sonae stores. Sonae Real Estate was responsible for CascaiShopping - the first regional shopping centre built in Portugal.

At the same time, Complainant goes on to say, Sonae Group invested in many different areas such as communication, information technology, leisure and tourism. Then in 1996, all businesses of Sonae Indlistria (already present in Spain, the United Kingdom, Canada, Brazil and South Africa), and those of Pargeste (made up of non-strategic activities) were separated from Sonae Investimentos SGPS, SA. As a result, Sonae Investimentos, SGPS, SA became a holding company totally dedicated to modern retail business, and a new holding, Inparsa, was formed grouping together all the wood derivatives businesses (Sonae Ind'Istria) and all other non-strategic activities.

In September 1999, as a result of the absorption of Inparsa and Figeste into Sonae SGPS, SA (formerly known as Sonae Investimentos SPGS, SA), Sonae Group benefited from the systematic use of its name across the group as well as gaining critical mass in European terms and then in 2005, Sonae Group announced the decision to spin off Sonae Indústria, following which Sonae Group held directly or indirectly 6.66% of the share capital of Sonae Group.

Finally, during 2007, a new company named Sonae Capital was created, included in the Sonae Group, and quoted on the Portuguese Stock Exchange. Complainant asserts that the creation of Sonae Capital and its appearance on the stock exchange market has been highly publicised.

Complainant states that it is the owner of Portuguese trademark registrations for the trademark SONAE, as well as the owner of the ccTLD registrations <sonae.pt> and <sonae.com>. It also claims that SONAE is a well-known trademark being widely recognised by consumers.

Complainant submits that the Domain Name reproduces in full its trademark SONAE as well as infringing the characteristic element of the respective company name, and as such can easily be confused with its Portuguese trademark registrations.

Complainant states that the right to use the trademark SONAE belongs to it and not to any other entity, and that the registration of the Domain Name constitutes an infringement of Complainant's exclusive rights in its trademark SONAE.

Complainant asserts that Respondent is not the owner or applicant of any trademark registration consisting of or containing the expression "SONAE", and that the expression "SONAE" does not form part of Respondent's company name, nor has it been used to designate Respondent on the market.

Complainant further notes that the website corresponding to the Domain Name has not yet been built and upon trying to access the website at "www.sonae.net", the hits of a search on the Google search engine immediately show the websites of Complainant, the first of the said results corresponding to its Domain Name <sonae.pt>.

Complainant contends that there are no valid grounds for a legitimate interest on the part of Respondent in respect of the Domain Name and that the reputation of the trademark SONAE is publicly and widely known not only in Portugal, but by consumers in general.

Complainant suggests that if in the future Respondent were to start making genuine use of the Domain Name it would then create confusion with Complainant's own trademark SONAE and could damage Complainant's activities, and constitutes an act of unfair competition.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is clear from the evidence that Complainant has rights in the SONAE trademark ("the SONAE Trademark". Complainant, or commercial entities associated with it, appears to have used the SONAE Trademark in Portugal since 1959. Relevantly, in the 1980s Complainant expanded its operation with the acquisition of a chain of supermarkets. It has continued to grow since then. This was all well before the Domain Name was registered in 2004.

Complainant has traded extensively in relation to and registered the SONAE Trademark. The Domain Name, apart from the gTLD ".net" is identical to the SONAE Trademark

On this basis it is found the SONAE Trademark is a protectable trademark to which the Domain Name is identical and confusingly similar.

B. Rights or Legitimate Interests

In the light of the above facts and finding, it is difficult to understand why Respondent chose the Domain Name other than as a reference to Complainant and its goods and/or services. Nor can it be envisaged that SONAE has any immediately apparent meaning other than as an indication of origin of Complainant.

Respondent may well have been able to present an explanation as to why it chose the Domain Name but in the absence of any response the Panel is obliged to draw an inference that no suitable explanation exists, particular given that the expression "sonae" seems to have no known meaning, apart from as identifying Complainant. Accordingly, given what seems to be the clear connection between the Domain Name and Complainant and the SONAE Trademark and given the substantial exposure, and the registration and use of the SONAE Trademark, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

A key issue in this case is whether the lack of active or indeed any apparent use of the Domain Name (whereby it resolves to a website) without any other disentitling conduct, for example, attempting to sell the Domain Name to the trademark owner can amount to circumstances allowing a finding of bad faith. This situation is often referred to as "passive holding".

In the Panel's view, passive holding, absent other conduct, does not prevent a finding of bad faith registration and use - see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel does, however, need to take into account all relevant circumstances to decide whether Respondent is acting in bad faith. In the present situation, it appears that Respondent has done little more than register and passively hold the Domain Name without further conduct which might point towards or away from bad faith.

However, there are circumstances which are of particular relevance in the present case. Firstly, Complainant has put forward strong evidence that it is a significant corporate entity in Portugal and has an extensive reputation and goodwill in the SONAE Trademark. The Panel also notes that the SONAE Trademark appears to be reasonably distinctive and made up of an unusual combination of letters, which appear to have no particular meaning other than as an identification of Complainant. This at least makes it incumbent on Respondent to explain why it registered the Domain Name. In the absence of a response the Panel is not able to infer why Respondent chose the Domain Name and has passively held the Domain Name for approximately 10 years.

The Panel acknowledges that the position is not entirely clear-cut. However, in the absence of any attempt to explain or justify its registration and retention of the Domain Name and also given the importance of the SONAE trademark to Complainant, the Panel concludes that Complainant has made its claim, by a balance of probabilities.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sonae.net> be transferred to Complainant.

Clive L. Elliott QC
Sole Panelist
Date: June 13, 2014