The Complainants are Accor of Evry, France and SoLuxury HMC of Paris, France (hereinafter collectively referred to as the “Complainants”), represented by Dreyfus & associés of France.
The Respondents are PrivacyP, Domain Admin of Queensland, Australia and Jean Marie Bergeron, BGSR Media Systems SA of Swatar, Malta (hereinafter collectively referred to as the “Respondents”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2012. On January 3, 2012, the Center transmitted by email to Power Brand Center Corp a request for registrar verification in connection with the Domain Name. On January 6, 2012, Power Brand Center Corp transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 13, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 17, 2012.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on January 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 9, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 21, 2012. 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
Regarding the two Complainants, the Complainant Accor is one of the world leaders in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant Accor operates more than 4,200 hotels in 90 countries worldwide, including one Pullman hotel in Versailles named Pullman Versailles Château. Accor operates 157 hotels in Australia among which 4 hotels Sofitel, and 1,428 hotels in France among which 12 hotels Sofitel.
The Complainant SoLuxury HMC, a subsidiary of Accor, holds the luxury trademark SOFITEL, which is established in 52 countries in Europe, Africa, the Middle East, Pacific Asia, and in North and South America.
The Complainants own numerous SOFITEL trademark registrations across the world notably in Australia and in France among them, including No. 939096 International trademark protected in Australia, dated August 30, 2007 and covering services in classes 35, 36, 43 and 44, No. 0939096 Community trademark dated August 30, 2007 and covering classes 35, 36, 43 and 44, and No. 3485495 French trademark dated March 2, 2007 and covering services in classes 35, 36, 43 and 44.
The Domain Name was registered on January 28, 2010 and the Respondents have used the Domain Name to direct Internet users to a parking page displaying sponsored links related to hotels and/or the travel industry. 5. Parties’ Contentions A. Complainants
The Complainants contend that the Domain Name is identical or confusingly similar to their trademark SOFITEL for the Domain Name reproduces the Complainants’ trademark in its entirety, which previous UDRP panels have considered to be well-known. The association of a geographical term “chateau de versailles” to the Complainants’ trademark reinforces the likelihood of confusion because the Domain Name refers to hotels operated by the Complainants in France.
The Complainants further contend that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Respondents are in no way affiliated with the Complainants nor have been authorized or licensed by the Complainants to use the trademark. Moreover, the Respondents are not commonly known by the name Sofitel.
The Complainants finally contend that the Respondents have registered and are using the Domain Name in bad faith. The Complainants are well-known in the world, in particular in France and Australia, where one of the Respondents is located. It is implausible that the Respondents were unaware of the Complainants when registering the Domain Name. Moreover, the Respondents’ use of the Domain Name to divert Internet users and to direct them to a webpage providing click through revenues to the Respondents evidences bad faith. Besides, the use of a privacy shield is not in itself constitutive of bad faith but combined with other elements, it may convey a finding of bad faith. B. Respondents
The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainants and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainants have introduced evidence showing they have established rights in the mark SOFITEL. The Complainants’ mark SOFITEL is protected as a trademark and the Complainants hold registration for the trademark SOFITEL including No. 939096 International trademark protected in Australia, dated August 30, 2007 and covering services in classes 35, 36, 43 and 44, No. 0939096 Community trademark dated of August 30, 2007 and covering classes 35, 36, 43 and 44, and No. 3485495 French trademark dated March 2, 2007 and covering services in classes 35, 36, 43 and 44. The registration of the trademark SOFITEL predates the registration of the Domain Name.
The Domain Name incorporates the Complainants’ trademark SOFITEL in its entirety, which in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainants’ mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289.
The Panel holds that the association of the geographical term “chateau de versailles” to the Complainants’ trademark reinforces the likelihood of confusion as the Domain Name refers to hotels operated by the Complainants in France. Adding the geographical term to the Domain Name is insufficient to distinguish the Domain Name from the Complainants’ trademark SOFITEL. See Carlsberg A/S v. Personal / decohouse, decohouse,WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee,WIPO Case No. D2011-0800.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainants’ trademark SOFITEL. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(ii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to the Complainants, the Respondents are in no way affiliated with the Complainants nor have been authorized or licensed by the Complainants to use the trademark SOFITEL.
The Panel is therefore satisfied that the Complainants have established prima facie evidence that the Respondents have no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Panel however notes that the Respondents have failed to file a response to prove their rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy.
Besides, the Panel holds that the Respondents’ use of the Domain Name to direct Internet users to parking pages displaying sponsored links related to hotels and/or the travel industry precludes a bona fide offering of goods and services.
For all of the above reasons, the Panel therefore finds that the Respondents have no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Complainants are well-known in the world. Additionally, the word “sofitel” has no meaning in French or English. The Panel views that it is inconceivable that the Respondents were unaware of the mark SOFITEL when they registered the Domain Name. Bad faith can be found when the Respondents were aware of the Complainants’ trademark at the time of registering the Domain Name. See LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464.
As evidenced by the documents submitted by the Complainants, the Respondents are using the Domain Name to resolve to parking pages displaying sponsored links related to hotels and/or the travel industry. The Panel holds that the use of the Domain Name by the Respondents to direct Internet users to a webpage providing sponsored links evidences bad faith. See Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyP,WIPO Case No. D2008-0025; and Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM),WIPO Case No. D2005-0591.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy. 7. Decision
For 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 Complainants.
Jacob (Changjie) Chen
Sole Panelist
Dated: March 6, 2012
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