WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor Soci�t� Anonyme v. Digi Real Estate Foundation
Case No.�D2006-1411
1. The Parties
The Complainant is Accor Soci�t� Anonyme, Evry, France, represented by Cabinet�Dreyfus�&�Associ�s, France.
The Respondent is Digi Real Estate Foundation, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with Affordable Computer Solutions Inc. dba.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November�3,�2006. On November�8,�2006, the Center transmitted by email to Affordable Computer Solutions Inc. dba a request for registrar verification in connection with the domain name at issue. On November�14,�2006, Affordable Computer Solutions Inc. dba transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November�16,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was December�6,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December�7,�2006.
The Center appointed Johan�Sj�beck as the Sole Panelist in this matter on December�14,�2006. 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 has based its Complaint on the following trademarks:
- SOFITEL, International Trademark n� 406255, filed on April�18,�1974, covering products and services in all classes;
- SOFITEL, International Trademark n� 614992, filed on October�29,�1993, covering products and services in classes 35, 36 and 37;
- SOFITEL, International Trademark n� 642172, filed on August�31,�1995 covering products and services in classes 35, 36, 37 and 42;
- HOTEL SOFITEL EXCLUSIVE CARD, International Trademark n� 719547, filed on August�16,�1999 covering products and services in class 42;
- SOFITEL ACCOR HOTEL & RESORTS, International Trademark n� 779873, filed on February�5,�2002 covering products and services in classes 16, 35, 42 and 43; and
- WORLD AND WORLD BY SOFITEL, International Trademark n� 786222, filed on April�26,�2002 covering products and services in classes 16 and 43.
The disputed domain name was registered by the Respondent on December�28,�2005.
5. Parties’ Contentions
A. Complainant
The Complainant contends that Accor was founded in 1967, by Paul Dubrule and G�rard P�lisson. Accor is the European leader and one of the world’s largest groups in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90�countries worldwide. The Accor group owns among others the trademarks Novotel, Ibis, Motel 6 and Sofitel. Sofitel is present in 61 countries around the world, with 200�hotels in 53 countries.
The disputed domain name is directed to a website proposing links to other hotel websites.
The Complainant sent letters to the Respondent on February�7,�2006, and reminders via e-mail and registered letters dated March�24,�2006 and May�26,�2006. The�Complainant requested that the Respondent should transfer the domain name to the Complainant. The Respondent did not reply to any of the letters.
The Complainant is the owner of a hotel in Chicago named “Sofitel Chicago Water Tower”. The Complainant uses the domain name since May�26,�2004.
The disputed domain name is confusingly similar to the trademark SOFITEL used by the Complainant. The disputed domain name is identical or at least similar to the name “Sofitel Chicago Water Tower” used by the Complainant as at trade name.
The Respondent has no prior rights or legitimate interest in the domain name and is not known under the names “Sofitel”, “Sofitelchicagowatertower” or any similar term. The�Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, as it is directed to a website proposing links to other hotel websites. Such use of this domain name cannot be considered as a bona fide offering of goods or services.
It seems obvious that the Respondent knew or must have known the Sofitel’s hotel chain, and more particularly the hotel “Sofitel Chicago Water Tower” in Chicago, at the time it registered the domain name. It seems difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name as the very precise reproduction of the trade name “Sofitel Chicago Water Tower” clearly indicates the Respondent had the Complainant in mind while registering the disputed domain name.
The Respondent, by registering a domain name corresponding to a famous name it could not ignore, intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. This conduct constitutes evidence of bad faith use, since the Respondent is trying to make profit from the Complainant’s trademarks reputation, by increasing the traffic on its websites thanks to the mere reproduction of somebody else’s trademark.
It is the opinion of the Complainant, that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph�4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of several registered SOFITEL trademarks. In addition to this, evidence submitted by the Complainant shows that the Complainant is using the name combination “Sofitel�Chicago Water Tower” as a trade name for a hotel in Chicago.
The disputed domain name incorporates the Complainant’s registered trademark SOFITEL in its entirety and is identical to “Sofitel�Chicago Water Tower” which is the name of the Complainant’s hotel in Chicago.
The ability for the words “Chicago Water Tower”, being a famous landmark in Chicago, to distinguish the domain name from the Complainant’s trademark is limited and has little, if any, significance, especially since the complete word combination “Sofitel Chicago Water Tower” is identical to the name of the Complainant’s hotel and trade name.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark SOFITEL and that the Complainant has proved the requirement under paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph�4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Based on the evidence, the Panel finds that the Complainant has not licensed or otherwise consented to the Respondent’s use of its trademark SOFITEL in connection with the disputed domain name which is confusingly similar to the trademark. The Respondent is not known by the name “sofitel” or “sofitelchicagowatertower” or any similar term. Furthermore, the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name by directing it to a website with links to other hotel websites.
There is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph�4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph�4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
It has been argued by the Complainant that it is obvious that the Respondent knew or must have known about the Sofitel hotel chain and more specifically the hotel “Sofitel Chicago Water Tower” when registering the domain name . The fact that the disputed domain name is used for a website displaying links to other hotel websites indicates that the Respondent probably had the Complainant in mind when registering and using the domain name.
The circumstances in the case before the Panel indicate that the Respondent was in all likelihood aware of the Complainant’s trademark SOFITEL and that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark SOFITEL as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph�4(a)(iii) of the Policy and that the domain name has been registered and used in bad faith.
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 be transferred to the Complainant.
Johan Sj�beck
Sole Panelist
Dated: December�21,�2006
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