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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sogrape Vinhos S.A. v. Netplus Communication

Case No. D2009-0414

1. The Parties

The Complainant is Sogrape Vinhos S.A. of Vila Nova de Gaia, Portugal, represented by Joao Pereira da Cruz, Portugal.

The Respondent is Netplus Communication of Issy les Moulineaux, France.

2. The Domain Name and Registrar

The disputed domain name <sogrape.com> is registered with Gandi SAS.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2009. On March 31, 2009, the Center transmitted by email to Gandi SAS a request for registrar verification in connection with the disputed domain name. On March 31, 2009, Gandi SAS 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 sent an email communication to the Complainant on April 8, 2009 advising that the Complaint was administratively deficient. The Complainant filed an amendment to the Complaint on April 15, 2009. The Center verified that the Complaint together with the amendment to 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 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2009. The Respondent did not submit a formal Response but on May 7, 2009 forwarded to the Center a short statement protesting the ongoing procedures and requesting they be stopped with a suggestion that the Respondent be contacted if further discussion were desired. Following this communication from the Respondent, the Center advised the parties that they may wish to consider suspending the proceedings to explore a settlement and that unless the Center heard otherwise from the Complainant by May 11, 2009, the Center would proceed to appoint the Panel. The Complainant did not request to suspend the proceedings.

The Center appointed Joan Clark as the sole panelist in this matter on May 15, 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

The Complainant is a Portuguese producer of table wine with a history going back to 1942. It is the owner of several Portuguese trademark registrations all for the word SOGRAPE above the word PORTUGAL in much smaller letters. These Portuguese registrations include No. 128,733 granted on 8 November 1945 for wines. The Complainant is also the owner of international trademark registration No. 214,935 for the trademark SOGRAPE in bold letters above the word PORTUGAL in smaller print protected since November 26, 1958 for wines, as well as community trademark registration No. 436,196 for the trademark SOGRAPE granted on October 20, 1998 for alcoholic drinks except beers.

The disputed domain name, <sogrape.com>, was created on March 4, 1997.

5. Parties` Contentions

A. Complainant

The Complainant asserts that it is the biggest Portuguese producer of table wines and, since 1942, has been of relevant importance in its field of activity. The Complainant further states that it stands out from its competitors in view of the renown and prestige that it has achieved, the Sogrape Group having won prices and awards at the major national and international wine competitions.

The Complainant further avers that its current production base of Sogrape includes fourteen estates in the main wine-growing regions of Portugal, as well as the estates it has in the region of Mendoza in Argentina, making a total of 800 hectares of vineyards, and also has ten wine production centres in Portugal and two in Argentina, with a total capacity of more than 43,000,000 litres.

The Complainant declares it is the owner of several Portuguese trademark registrations all for the word SOGRAPE. Copies of the registration certificates consistently show that the prominent part of the trademarks is the word SOGRAPE above the word PORTUGAL in much smaller letters. These Portuguese registrations include No. 128,733 granted on 8 November 1945 for wines and several other Portuguese registrations for printed advertising matters and related items, import and export services, insurance agents and financial operations, registered in the years 1982 and 1988 respectively, all for the word SOGRAPE with the word PORTUGAL in much smaller print below.

The Complainant declares it is also the owner of international trademark registration No. 214,935 for the trademark SOGRAPE in bold letters above the word PORTUGAL in smaller print, protected since 26 November 1958 for wines, as well as community trademark registration No. 436,196 for the trademark SOGRAPE granted on October 20, 1998 for alcoholic drinks except beers.

The Complainant claims that the trademark SOGRAPE is well established, not only in Portuguese territory, but also internationally, and is exceptionally well-known and recognized by consumers in general.

The Complainant further avers that the disputed domain name totally reproduces the SOGRAPE trademarks belonging to the Complainant and can be easily confused with them.

The Complainant also maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant adds that the Respondent is not the owner or applicant for any trademark registration consisting of, or containing, the word SOGRAPE which does not form part of the Respondent`s company name and has not been used to designate the Respondent on the market.

The Complainant adds that the website for the disputed domain name, "www.sogrape.com", is not active.

In support of its argument of bad faith in the registration and use of the domain name <sogrape.com>, the Complainant states that the reputation of its trademark SOGRAPE in its field of activity is widely and publicly known, and claims that the trademark SOGRAPE has undeniably acquired the status of a well-known mark, and that it is difficult to believe that the Respondent was unaware of this fact.

The Complainant asserts that consumers will access the website for the disputed domain name believing it is a site associated with the Complainant`s domain name <sogrape.pt> belonging to the Complainant.

Further, the Complainant claims that if the Respondent were to start making genuine use of the website designated by the disputed domain name, it would benefit from the fact that the Complainant`s trademark is well-known and would divert customers as a result of confusion with the SOGRAPE trademark.

The Complainant maintains that the interest of the Respondent in the disputed domain name could only be for the purpose of selling the domain name to its legitimate owner for abusive financial consideration, or to use the domain name for the Respondent`s benefit and to the detriment of the Complainant`s trademark.

The Complainant has requested that the domain name <sogrape.com> be transferred to the Complainant.

B. Respondent

A communication by e-mail was sent from Mr. Jean-JérГґme Deroubaix, as Chef de projet for the Respondent Netplus Communication, which stated that the Respondent did not understand the reasons for the Complaint and the procedure taking place, and further stated that the Respondent uses the disputed domain name for one of its "extranets" and for "boГ®tes emails".

The communication from the Respondent continued with a request to stop the current proceedings and, if further discussion were desired, stating contact should be taken with Mr. Jean-JérГґme Deroubaix directly.

There was no further communication from either party.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent`s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel finds that the domain name <sogrape.com>, which consists of the principal and prominent part of the Complainant`s trademarks, is confusingly similar to these trademarks. The appearance in the domain name of the gTLD suffix ".com" does not detract from the issue of confusing similarity. The Panel is satisfied from the copies of the registered trademarks produced by the Complainant that the Complainant has rights in these trademarks.

The Complainant has therefore established the first element in order for the Complaint to succeed.

B. Rights or Legitimate Interests

There is no evidence before the Panel that would indicate the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent`s cryptic statement that it uses the disputed domain name for one of its "extranets" and for its "boГ®tes emails" does not answer the assertions put forward by the Complainant that the Respondent has no rights or legitimate interests in the domain name, and that the expression SOGRAPE does not form part of the Respondent`s company name nor has it been used to designate the Respondent on the market.

Furthermore, the Respondent has not made any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and has not been authorized by the Complainant to use the Complainant`s trademark which, according to the evidence adduced, has been used for many years in connection with a well-established industry.

Most importantly, the Respondent has given no reason whatsoever as to why it chose "sogrape" in its domain name.

The Complainant has established the second element in order for the Complaint to succeed.

C. Registered and Used in Bad Faith

The Respondent has not countered the Complainant`s assertion that its trademark SOGRAPE has undeniably acquired the status of a well-known mark and that it is difficult to believe that the Respondent was unaware of this fact. In fact, the Respondent has given no explanation whatsoever for its choice as its domain name of "sogrape", the principle part of the Complainant`s trademarks, and has not denied that it was aware of the Complainant`s trademarks when it registered its domain name.

In the present case, where the Respondent has registered a domain name which is identical to the principal part of a trademark first registered more than 50 years before and which, according to the evidence, has been widely used, the Panel is justified in finding that the registration of the disputed domain name was in bad faith in the absence of any explanation by the Respondent for its choice.

By registering the disputed domain name, the Respondent has prevented the Complainant from acquiring the same domain name which consists of the prominent and principal part of the Complainant`s trademarks in addition to the suffix ".com". Even though the website under <sogrape.com> is not active, its very existence may confuse consumers when they are seeking a website for the Complainant`s products.

While the domain name has not been used actively in connection with a bona fide offering of goods or services, the fact the registration has been maintained constitutes a passive use of the domain name and may be considered a use in bad faith as contemplated by paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marsmallows, WIPO Case No. D2000-0003.

The Panel concludes that the domain name <sogrape.com> was registered and is being used in bad faith and the third element required for the Complaint to succeed has been established.

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 <sogrape.com> be transferred to the Complainant.

Joan Clark
Sole Panelist

Dated: May 29, 2009