WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sonae SGPS, S.A. v. Prodigentia/Prodigentia Tecnologias de Informação

Case No. DCO2014-0005

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 Prodigentia/Prodigentia Tecnologias de Informação of Paço D'Arcos, Portugal.

2. The Domain Name and Registrar

The disputed domain name <sonae.co> is registered with GoDaddy.com, LLC (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 disputed domain name. On April 14, 2014, the Registrar 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 April 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2014.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 23, 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

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.

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 the 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, its prominence in Portugal being indisputable.

The SONAE trademark is the subject of a large number of registrations, such as:

- Portuguese trademark registration no. 306.788 SONAE on class 16, granted on January 3, 1966 (Annex C)

- Portuguese trademark registration no. 306.789 SONAE on class 35, granted on January 3, 1966 (Annex C)

- Portuguese trademark registration no. 348.193 SONAE on classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 16, 18, 19, 20, 21, 23, 24, 25, 26, 28, 29, 30, 32, 33, 34, 35, 38, 39 and 41, granted on February 12, 2003 (Annex E)

- Portuguese trademark registration no. 384.084 SONAESIERRA on classes 35, 36, 37, 41, 43 and 45, granted on August 11, 2005 (Annex F)

- Community trademark registration no 1.810.795 SONAE on classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 18, 19, 20, 21, 23, 24, 25, 26, 28, 30, 31, 32, 33, 34, 35, 38, 39 and 41, granted June 23, 2005 (Annex G)

The word "sonae" is an acronym of the Complainant's company name created in 1959 and it has been used and registered as trademark since 1996. Today many of its subsidiaries' company names in Portugal and abroad use the word "sonae" in their company name, which is strongly implemented not only in Portuguese territory but also at international level. Sonae and its subsidiaries' companies are present worldwide such as in Spain, the United Kingdom of Great Britain and Northern Ireland, Canada, Brazil, South Africa, Italy, Denmark, Greece, Morocco, China and Colombia.

".co" is used as a country code Top-Level Domain ("ccTLD") for Colombia.

The Complainant uses its SONAE mark on its principal web sites, owning the ccTLD registration <sonae.pt> and generic Top-Level Domain ("gTLD") <sonae.com>.

Annex H, is a print screen of the website at the disputed domain name, where there is an explicit offer for selling the disputed domain name (right sided middle page). At the current date, the Panel has accessed the website and verified that the previous explicit selling offer was removed, nevertheless keeping on the top of the page the message "Interested in this domain?".

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name reproduces the mark SONAE, in which the Complainant holds exclusive rights. Details of these trademarks have been provided to the Panel.

The Complainant also argues that the reputation of the trademark SONAE within its business sector is publicly and widely known, not only in Portugal but also by consumers in general.

Facing that, the Complainant argues the trademark SONAE has acquired the status of a well-known mark and it could not be reasonable supposed that the Respondent is not aware of this reality once it is a Portuguese Company with head office in Portuguese Parish of Paço d'Arcos. This Parish is located nearby one of the biggest SONAE real estate.

The Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not the owner or applicant of any trademark registration consisting of or containing the expression "sonae" and the same expression does not form part of the Respondent's company name.

The Complainant asserts that bad faith and fraudulent intent may be inferred from Respondent's registration of the disputed domain name, given the message "this domain is for sale" expressly displayed on the website "www.sonae.co".

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.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights." Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name." Policy, paragraph 4(a)(ii). The third element for a complainant to establish is that the "domain name has been registered and is being used in bad faith." Policy, paragraph 4(a)(iii).

A. Identical or Confusingly Similar

The disputed domain name <sonae.co> is exclusively composed by the word "sonae". The Complainant has registered the trademark both alone – SONAE – and followed by another word – such as SONASIEARRA or SONAECAPITAL.

As previously mentioned in The Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services, WIPO Case No. D2008-1907 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.

The same applies to the suffix ".co", an attribute of the ccTLD, for Colombia. The suffix ".co" is for registration purposes only, being a requirement of the Internet domain name system.

It is also well established in previous UDRP decisions 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.

The Panel notes here, even though more relevant under the third element of the Policy that bearing in mind that SONAE is a widely known trademark at least in Portugal, and that the Respondent is a Portuguese company, it is not acceptable that when registering the disputed domain name the Respondent is not fully aware that these rights belong to the Complainant.

In view of the above, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark SONAE.

Accordingly, the requirement of paragraph 4 (a)(i) is fulfilled.

B. Rights or Legitimate Interests

Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 "[i]n order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel."

In this case, the Panel finds that the Complainant has made out its prima facie case. The Respondent did not reply to the Complainant's contentions to demonstrate its rights or legitimate interests. The Panel further finds in this case that since the only word in the disputed domain name is the acronym derived from the Complainant's original company name, SOciedade NAcional de Estratificado, and became a well-known trademark, at least, it is difficult to conceive any legitimate reasons for anyone to use this word in a domain name, unless the person has acquired that right through an authorization or license from the owner, which is not the case in the present case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Having regard to all the circumstances, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. The disputed domain name comprises in its entirety of the widely known trademark of the Complainant. The Panel further notes that the Respondent was very likely aware of the Complainant's rights and the Respondent does not appear to have any rights or legitimate interests to the disputed domain name. (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

The fact that the Respondent expressly offered for sale the disputed domain name further tends to suggest bad faith on the part of the Respondent. See paragraph 4(b)(i) of the Policy.

Under these circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

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 disputed domain name <sonae.co> be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: June 6, 2014