WIPO Domain Name Decision D2018-1237 for sofitelmplsdining.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ACCOR, SoLuxury HMC v. WhoisGuard Protected, WhoisGuard, Inc., Van Dung Case No. D2018-1237 1. The Parties
Complainants are ACCOR and SoLuxury HMC of Issy-Les-Moulineaux, France (hereinafter “Complainant”), represented by Dreyfus & associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Van Dung of Rach Gia, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 4, 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
Complainant is recognized as a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. Complainant operates over 3,972 hotels in ninety-two countries around the world, which contain over 500,000 rooms, from economy to upscale. For more than 45 years, Complainant has offered hotel stays tailored to the specific needs of business and leisure customers, and consequently has become recognized and appreciated around the world for their service quality. In particular, SOFITEL is the only French luxury hotel brand with a presence on five continents, including in particular 37 hotels in Viet Nam where Respondent is located. Complainant owns valid and subsisting registrations for the SOFITEL trademark in numerous jurisdictions around the world, including international registrations with designations in Viet Nam where Respondent is located, such as International Trademark No. 86332 for SOFITEL, registered on August 26, 2005.
Respondent registered the disputed domain name on July 19, 2017. Currently, the disputed domain name resolves to an inactive Windows Server Internet Information Services website. In addition, mail servers are configured through the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name reproduces entirely their SOFITEL trademark, which previous UDRP panels have considered to be “well-known” or “famous,” such that incorporation into a domain name is sufficient to conclude that domain name is identical or confusingly similar to the SOFITEL trademark. Complainant also asserts that the addition of the geographical term “MPLS” (an abbreviation for Minneapolis, Minnesota), and the generic term “dining,” are insufficient to avoid any likelihood of confusion. Rather, Complainant asserts, these terms increase the risk of confusion, because they describe the location of a Sofitel hotel, and the restaurant services of that hotel. Complainant also asserts that the “.com” generic Top-Level Domain (“gTLD”) is not taken into consideration in confusing similarity examinations.
Complainant asserts that Respondent has no prior rights or legitimate interest in the disputed domain name, due to several years of priority for the SOFITEL before the disputed domain name was registered. Complainant also asserts that Respondent cannot feign any legitimate intent or activity in connection with the disputed domain name due to its similarity to the famous SOFITEL mark. In addition, Complainant asserts that Respondent has made no demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, which is highlighted by its use of privacy registration services to frustrate Complainants attempts to contact Respondent. Complainant further asserts that Respondent is not commonly known by the name Sofitel, and Respondent is not affiliated or otherwise authorized by Complainant to use the SOFITEL mark.
Complainant argues it is impossible that Respondent did not have Complainant and the SOFITEL mark in mind when it registered the disputed domain name, due primarily to the well-known nature of the mark throughout the world. To that end, Complainant asserts that Respondent’s failure to perform a quick trademark search or simple Google Internet search is a contributory factor establishing bad faith. Complainant also asserts that Respondent’s deliberate concealment of its identity and contact information indicated registration in bad faith. Complainant also argues that long term passive holding of the disputed domain name constitutes use in bad faith, based on the strong reputation of the SOFITEL mark. Complainant also asserts that the disputed domain name is configured with an email server, which may be used to perpetrate phishing attacks against Complainant’s customers or employees associated with its Minneapolis, Minnesota hotel. Finally, Complainant explains that it sent a cease and desist letter to Respondent on September 21, 2017, and that Respondent never replied to this cease and desist letter. Complainant points to Respondent’s failure to reply and failure to resp