WIPO Domain Name Decision D2018-1104 for sofitella.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Accor, SoLuxury HMC v. Registration Private, Domains By Proxy, LLC / I S, ICS Inc. Case No. D2018-1104 1. The Parties
The Complainant is Accor, SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / I S, ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2018. On May 16, 2018, the Center transmitted, by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On May 17, 2018, the Registrar transmitted its verification response, by email to the Center, confirming that the Respondent is listed as the registrant and providing the contact details for the registrant.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 and 4, the Center formally notified the Respondent of the Complaint and that this proceeding commenced on May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was set to June 13, 2018. The Respondent did not submit any response. Accordingly on June 14, 2018, the Center notified the parties of the Respondent's default.
The Center appointed Peter L. Michaelson as the sole panelist in this matter on June 26, 2018. 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
As reflected in the registration record for the disputed domain name in the public WhoIs database (a copy of that record appears in Annex 1.1 to the Complaint), the disputed domain name was registered on May 29, 2017. A. The Complainant's SOFITEL marks (collectively the "SOFITEL Marks")
As indicated in the Complaint, the Complainant owns multiple international trademark registrations for the term "SOFITEL" in block letters. The Complainant has provided, in Annexes 7.1 – 7.4 to the Complaint, copies of the registration records for four of these registrations, the pertinent details of two of them are as follows:
1. SOFITEL
International registration: 939096; Registered: August 30, 2007
Designations include the United States
This mark is registered for use in connection with: "Real estate business management services and real estate administrative management services, including the administrative management of hotels, motels, hotel complexes, flats and residential hotels; advertisement services relating to the organization and management of hotels, motels, hotel complexes, residential hotels, flats and temporary accomodation facilities" all in international class 35; "Real estate affairs; management of real estate, housing and accomodation, including hotels, motels, hotel complexes and residential hotels; accommodation agencies (real estate), management of housing and accomodation, property leasing, rental of flats, studios and rooms" all in international class 36; "Hotels, residential hotels, motels, operation of hotel complexes; hotel services, restaurant services (food and drink), services of cafeterias, tea rooms, bars (except clubs); temporary accomodation; vacation homes; services for the reservation of hotel rooms for travellers, of temporary accomodation; non-professional consultancy and advice in connection with hotel and restaurant services" all in international class 43; and "Health care institutions, medical care, hygienic and beauty care, body care services, in particular using hydrotherapy, including balneotherapy, thalassotherapy and spa treatments, beauty salons, hairdressing salons, rest and convalescent homes; providing of information and advice on dietetics" in international class 44.
2. SOFITEL
International registration: 863332; Registered: August 26, 2005
Designations include the United States
This mark is registered for use in connection with: "Administrative management of hotels and hotel complexes, advice and assistance for commercial company management and administration; business organization and administration consultancy and advice in the fields of hotel and restaurant business including services provided by a franchiser, namely assistance in running or managing a commercial venture" all in international class 35; "Tourism and travel agencies; sightseeing tours; tourist guide services (couriers); travel, excursion and cruise arrangement; reservations for sightseeing tours, seats for travel; car rental; consulting and information on organizing transport and tourism in a town and/or a region" in international class 39; and "Hotel and restaurant services (providing of food and drink), temporary accommodation, running motels, restaurants, cafeterias, cafés, tea rooms, bars (except clubs), operation of tourist homes, reservation services for hotel rooms for travellers, non-professional consultancy and advice in connection with hotel and restaurant services" in international class 43. B. The Parties and their activities
Complainant SoLuxury HMC is a fully-owned subsidiary of Complainant Accor (as indicated in Annex 4 to the Complaint). For the sake of convenience, both Complainants and Respondents will be hereinafter collectively referred to as the "Complainant" and the "Respondent", respectively, except where the specific context specifically indicates or implies reference to a specific entity.
Currently, Complainant Accor is a large worldwide operator of economy and mid-scale hotels, and a significant player in upscale and luxury hospitality services. Accor opened its first hotel in 1967 (approximately 51 years ago). Since then, it has expanded and evolved to now operating more than 4,100 hotels in 95 countries worldwide with over 583,000 rooms, from economy to upscale under various brand names, including: SOFITEL, PULLMAN, NOVOTEL, MERCURE and IBIS. Of those brands, SOFITEL is a French luxury hotel brand offering contemporary hotels and resorts in 121 different facilities located across 41 countries spanning 5 continents with cumulatively more than 30,000 rooms. Currently, SOFITEL is expanding its presence in Latin America, the Middle East, Africa and Asia (Screenshots of various pages from the website of Complainant Accor, at its corporate website at "", which describe its business history appear in Annex 5.1 to the Complaint). The Complainant operates in the United States through 28 hotels cumulatively providing 10,815 rooms, including the Hotel Sofitel Los Angeles located in the Beverly Hills suburb of Los Angeles and which itself provides 295 rooms.
The Complainant promotes its services using its registered trademarks through various marketing channels including its website at .
The disputed domain name, when entered into a user's browser, redirects that browser to a web page that provides a browser add-on called "Personal Finder", which may be harmful. This add-on, once installed by the user, requests that user to create a user account providing the user's first and last name, gender, mobile telephone number or email, a password and that user's birthday (screenshots shown in Annexes 1.2 and 1.3 to the Complaint).
Further, the Respondent has established an "MX record" for the disputed domain name which reflects that the Respondent could use the name as a domain for e-mail addresses handled by an email server, thus potentially presenting a risk that the domain name will be used as the domain for e-mail addresses used in facilitating phishing activities (screenshot of an MX record, associated with the disputed domain name provided, in Annex 1.4 to the Complaint).
Additionally, the Respondent is currently offering to sell the disputed domain name for USD 299.00 (screenshot of a search result provided in Annex 14 to the Complaint).
To amicably resolve the dispute, on September 4, 2017, the Complainant sent a cease-and-desist letter to the Respondent, via both postal mail and email, requesting, inter alia, that the Respondent transfer the name to the Complainant at no charge (a copy of this letter appears in Annex 6 to the Complaint), and the underlying registrant behind the privacy service be disclosed. The privacy service replied stating that it merely provides an anonymity screen for domain name registrants and identified the underlying registrant. Having this identification, on November 7, 2017, the Complainant sent a cease-and-desist letter to the underlying registrant requesting it to immediately cease use of the disputed domain name and transfer it to the Complainant. Despite several successive reminders, the Respondent never replied (copies of those reminders appear in Annex 6 to the Complaint). Consequently, the Complainant initiated the present proceeding seeking transfer of the disputed domain name. 5. Parties' Contentions A. Complainant (i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to its mark SOFITEL.
Specifically, the disputed domain name contains this mark appended by the letters "LA" with those letters being incapable of adding sufficient distinctiveness whatsoever to the name to m