WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oni Way Ė Infocomunicações, S.A. v. Ideia Casa, Grandes Distribuições, Lda.
Case No. D2001-0912
1. The Parties
The Complainant is Oni Way - Infocomunicações, S.A., a Portuguese public limited liability company, with place of business at Av. José Malhoa, Lote 13 Ė A, 1070-157 Lisboa, Portugal.
The Respondent is Ideia Casa, Grandes Distribuições, Lda., a Portuguese private limited liability company with place of business at Apartado 74, São Pedro do Estoril, 2766 - 501, Estoril, Portugal.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are <oniway.com> and <oniway.net>
The registrar of the disputed domain names is Bulkregister.com, Inc.
<Whois Server: bulkregister.com/brwhois.phtml>
Referral URL: <www.bulkregister.com>
3. Procedural History
The relevant procedural stages of this administrative procedure are as follows: Complainant initiated the proceeding by filing a Complaint via email, which was received by the WIPO Arbitration and Mediation Center ("the Center") on July 17, 2001, and in hard copy on July 19, 2001.
Payment by the Complainant of the mandatory filing fees was duly effected.
The Center transmitted a Request for Registrar Verification to the registrar, Bulkregister.com, Inc. and the Registrarís Response was received by the Center on August 15, 2001.
On August 16, 2001, the Center transmitted the Notification of Complaint and commencement of the proceeding to Respondent via e-mail and courier mail. The Complainant was also copied on this notification by e-mail.
On September 2, 2001, the Respondent transmitted via e-mail its response to the Center and on September 3, 2001, a copy of the Response was received by fax.
On September 10, 2001, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On September 17, 2001, the undersigned sent by fax the executed Statement and Declaration to the Center.
On September 24, 2001, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by October 8, 2001. The Panel received a hard copy of the file in this matter by courier from the Center.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English. The Panel regrets that the Portuguese language was not used instead.
4. Factual Background
As stated by the Complainant
On June 23, 2000, one of the Complainantís shareholders (Onitelecom Ė Infocomunicações , S.A.) submitted a request for the new Corporate Name Oni Way Ė Infocomunicações, S.A., a new Portuguese company to be incorporated as a public limited liability company in Portugal. The above mentioned date constitutes a fundamental aspect of the case.
Said request took place before the Portuguese National Registrar of Companies Ė Registro Nacional das Pessoas Colectivas, as it was duly proved through Annex E, box 6 of the Complainantís plead.
On the same date, i.e., on June 23, 2000, the same shareholder applied for a Portuguese trademark application No. 347.728 "ONI WAY". Said Portuguese trademark application was correctly filed before the - INPI - Instituto Nacional da Propriedade Industrial (Portuguese National Institute of Industrial Property) as it was duly confirmed by Annex F of the Complainantís plead.
The above mentioned date of the filing of the Portuguese trademark application is also fundamental in this case.
As a result of the initial procedure and once approved the respective Corporate Name by the referred public service, the Complainant was formally incorporated under the Corporate Name Oni Way Ė Infocomunicações, S.A., on August 31, 2000, as per Annex G of the Complainantís plead.
Furthermore, the same Complainantís shareholder, based on the Corporate Name Oni Way Ė - Infocomunicações, S.A. applied and registered the domain name oniway.pt before the FCCN Ė Fundação para a Computação Científica Nacional (Portuguese National Domain Name Registrar), as per Annex J of the Complainantís plead.
The document attached to the plead bears no date for the application of the domain name <oniway.pt>, but on the searches effected by the Panel, this domain name was apparently applied for on September 12, 2000, and activated on October 25, 2000.
In the meantime, the Complainant tried to register the domain names <oniway.com> and <oniway.net> only to find that they were already registered by the Respondent.
The articles of incorporation of Oni Way Ė Infocomunicações, S.A. were published on October 2, 2000, on the Portuguese Official Gazette (Diário da República), III series, Nļ 228, as confirmed by the Panel. Through this publication, the Corporate Name Oni Way Ė Infocomunicações, S.A. was duly officially publicised to all interested parties.
The Complainant also raised that it contacted the Respondent asking for the transfer of the disputed domains. However, the Complainant did not prove such action.
As stated by the Respondent:
The Respondent is a Portuguese company ant its capital is held by two Italian citizens.
The Respondent sells house ware. The Respondentís incorporation, under the Corporate Name Ideia Casa, Grandes Distribuições, Lda. took place on April 7, 1995.
The Respondent uses the domain names <oniway.com> and <oniway.net> to sell house ware.
The Respondent domains are constituted by only one word: "oniway", while the Corporate Name of the Complainant is constituted by two words: "oni" and "way" .
5. Partiesí Contentions
Complainant states that it is the applicant of a Portuguese Trademark application "ONI WAY".
Complainant states that its corporate name is Oni Way Ė Infocomunicações, S.A. .
Complainant invokes and proves that it has initiated the procedure of incorporation well before Respondentís registration of the domain names.
Complainant alleges that is has applied for the Portuguese Trademark application "ONI WAY" well before Respondentís registration of the domain names.
Complainant alleges that the Respondent has no relevant interest or legitimate right to register the domain names in dispute.
Complainant states that it is the Respondentís intention to benefit from the illegitimate registration of the domain names in dispute by taking advantage of the Complainantís well known Corporate Name and trademark application by creating a likelihood of confusion, thus, diverting unadvised consumers to its website.
Complainant argues that the Respondent has registered the two domain names in bad faith.
Complainant requests that the Panel orders the Registrar to transfer the disputed domain names to Complainant.
The Respondent alleges that it is a Portuguese company and its assets is held by two Italian citizens living in Italy.
The Respondent invokes that it sells house ware and that it is one of the biggest Portuguese firms in that area, that it has several daily advertisements in all the national Portuguese television channels.
The Respondent argues that it has never seen any Complainantís announcements on the television and newspapers.
The Respondent proves that its incorporation took place on 7th April 1995 and that it is a successful company.
The Respondent claims that the Complainant is a recent company with no public success.
The Respondent states that it never heard about the Complainant.
The Respondent invokes that Complainant is not a well-known Portuguese corporation.
The Respondent invokes that the citizens which hold its capital have never heard about the Complainant.
The Respondent states that it uses the domain names <oniway.com> and <oniway.net> to sell house ware as it can be seen in the respective website.
The Respondent invokes that Complainantís corporate name is constituted by two words: oni and way .
The Respondent invokes that the respective domain names are constituted only by one word: oniway.
The Respondent claims that it is impossible to mislead the Complainantís clients.
The Respondent argues that it doesnít have registered or have acquired the domains names for the purpose of selling, renting, or otherwise transferring the domains names registration to the Complainant or to a competitor of the Complainant.
The Respondent claims that it doesnít have registered the domain names in order to prevent the Complainant from reflecting its name in a corresponding domain name.
The Respondent invokes that it doesnít have registered the domains names primarily for the purpose of disrupting the business of a competitor, because the Respondent and the Complainant are not competitors.
The Respondent states that it doesnít use the domain names to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainantís name
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), aims to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making the necessary determinations to resolve this administrative proceeding.
It is essential to the dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that the Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In the present case all the requirements were met. Both the plead of the Complainant and the Respondentís petition were filed according to the Rules.
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to prove that Respondent has engaged in abusive domain name registration, and to obtain the requested relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a Trademark or Service Mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by the Complainant.
The Paris Convention for the Protection of Industrial Property since its first version of 1883 establishes already in its article 8 that: "a trade name shall be protected in all the countries of the union without the obligation of filing, whether or not, it forms part of a Trademark".
Both entities in this case are Portuguese, and Portugal is a founding member of the Paris Convention for the Protection of Industrial Property.
Still considering that both entities in this matter are Portuguese it is perfectly reasonable to apply what Article 1 of the Portuguese Industrial Property Code in force states: "Industrial Property has the social function of guaranteeing fair competition by conferring the private rights regulated in this code, as well as to prevent unfair competition".
Furthermore, Article 25 of the same Portuguese Industrial Property Code clearly refers that unfair competition is possible irrespective of the intention of the involved entities.
This being said, let us consider now the applicability, in detail, of what is stated in paragraph 4 (a) of the Policy.
Complainant is the Applicant of a Portuguese trademark application No. 347.728 "ONI WAY", filed on June 23, 2000, covering the following goods in Class 9: "apparatus for recording, transmission and reproduction of sound or images, magnetic data carriers, data processing equipment and computers"; and the following services in Class 37: "installation of transmission lines and repairs"; and Class 38: "telecommunications, also via Internet".
It is evident that the domain names <oniway.com> and <oniway.net> are perfectly identical and confusingly similar to the trademark application "ONI WAY" owned by the Complainant, and also confusingly similar with the Complainantís corporate name Oni Way.
Respondentís argument that the Complainantís trademark and Corporate Name are composed of two words and that the Respondentís two domain names are composed only by one word is irrelevant.
Trademarks must be compared in its whole and it is an almost general rule in many jurisdictions, and more precisely in Portugal, therefore, the expressions are exactly the same, mainly in the phonetic aspect. This feature is certainly the one that is retained and used by the public in general.
It has not been referred nor proved by the Respondent that it has any rights or any legitimate interests whatsoever in respect to the expression "ONIWAY" and, consequently, in respect of the domain names <oniway.com> and <oniway.net>
The Respondentís Response is totally silent in any kind of justification as regards rights and legitimacy on the expression "ONIWAY".
Finally, we must address the delicate issue of bad faith. The Panel is perfectly aware that this is certainly the decisive aspect to base the decision.
Let us begin by stating that during the direct investigations effected by the Panel it was duly confirmed that:
- The Articles of Incorporation of both companies involved were officially published in the Portuguese Official Gazette.
- This publication contains the full articles from which the following is retained.
Article 2 of the Respondentís articles of incorporation reads: "Its corporate object consists of importing, exporting, trading and distribution of a great variety of goods, namely alarm systems, computers, printers, computer systems and programs of word and data processing, textile goods, telecommunications, electronic and electric material, household articles, dietetic and sanitary products, as well as proving non-juridical services to companies" (the underlining of certain parts were inserted by the Panel).
Article 3 of the Complainantís articles of incorporation reads: "1 - The corporation has the corporate object of establishing, managing and exploring telecommunications systems and infra-structures, providing telecommunication services, as well as the practice of any complementary, subsidiary or accessory activities related therewith, directly or by incorporation or by corporation sharing. 2-The corporation may participate in other corporations, with the same or with a different purpose, even if ruled by special laws, as well as in joint ventures" (the underlining of certain parts were inserted by the Panel).
A mere comparison of the business of both companies, being or not being yet in full operation, clearly demonstrates that many areas of activity are totally coincident.
While acknowledging that the Respondentsí incorporation took place on April 7, 1995, it is clearly proved that its interest and registration of the two domain names, <oniway.com> and <oniway.net>, ONLY took place after the beginning of the incorporation procedure of the Complainant.
In fact, the incorporation of the Complainant began on June 23, 2000, and finally took place on August 31, 2000. The registration of the Respondentís domain names took place on September 8, 2000.
It was also expressly referred by the Respondent that it is a successful company well-known in Portugal. It is never mentioned in the response that the Respondent is well-known by any other expression than Ideia Casa.
In other words, the Respondent does not state that it has acted in the market under the "ONYWAY" expression, previously to the beginning of the constitution of the Complainant (June 23, 2000) and its formal incorporation (August 31, 2000).
The Panel recognises that the Complainant Oni Way, has well established its existence before the general public as one of the four competitors for the concession of the administrative licence for the rendering of third generation mobile telecommunications services in Portugal (UMTS competition).
This competition is also well-known in many other countries other than Portugal, namely in the European Union, and it have raised a great impact on the general public.
The Panel is of the opinion that for a company that in its corporate subject also includes telecommunications, the reality of the Complainantís presence in the UMTS contest could not have been unnoticed.
In parallel to what is stated above ii should also be stressed that there are available administrative procedures answering in seconds whether a domain name will offend or not previous rights, namely Corporate Names.
It is the Respondentís obligation, according to the Registrarís Policy (paragraph 2): "By applying to register a domain name (...), you hereby represent and warrant to us that: b)to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party".
Considering all of the above, the Panel concludes that the registration of the two domain names <oniway.com> and <oniway.net> were made in bad faith, in accordance with provided by paragraph 4 (b) (iv) of the Policy.
In general terms of law, namely Portuguese law, the invoking party has the burden of proof.
The Panel recognises that Complainant has established the third and final element necessary to conclude that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain names <oniway.com> and <oniway.net>to the Complainant.
Based on its finding that the Respondent, Ideia Casa , Grandes Distribuições, Lda., has engaged in abusive registration and use of the domain names <oniway.com> and <oniway.net> as provided by paragraph 4(a) of the Policy, the Panel orders that the domain names <oniway.com> and <oniway.net> be transferred to the Complainant, Oni Way -Ė Infocomunicações, S.A, in accordance with the remedies set forth on paragraph 4(i) of the Policy.
António L. De Sampaio
Dated: October 10, 2001