The Complainants are Accor and SoLuxury HMC, both of Paris, France represented by Dreyfus & associés, France.
The Respondent is Weiping Lee of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2012. On January 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 13, 2012, the Center notified the Complainants that there appeared to be some typographical errors in the spelling of the Domain Names in the Complaint. On January 16, 2012 the Complainants filed an amended Complaint with the Center.
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 Respondent of the Complaint, and the proceedings commenced on January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 15, 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
The Complainants are major world-wide hotel operators and operate more than 4,200 hotels in 90 countries. Accor operates a number of hotel chains including Pullman, Novotel, Mecure and IBIS. SoLuxury HMC is a subsidiary of Accor and operates the Sofitel chain of hotels in 52 countries.
The Complainants operate 102 hotels in China, which include 20 Sofitel branded hotels. One of these hotels is the Sofitel Guangzhou Sunrich Hotel, located in Guangzhou, China.
The Complainants have registered a device mark consisting solely of the word “Sofitel” (the “SOFITEL Mark”) as a trade mark around the world including in China, where the SOFITEL Mark has been registered since August 30, 2007.
The Domain Names and were registered on August 23, 2010. 5. Parties’ Contentions A. Complainant
The Complainants make the following contentions:
(i) that the Domain Names are confusingly similar to the Complainants’ SOFITEL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainants consist of Accor and its subsidiary SoLuxury HMC (“Luxury”). Accor and Luxury contend that as members of the same group of companies they constitute an entity for the purposes of initiating a proceeding under the UDRP.
The Complainants, through Luxury, are the operators of the Sofitel chain of hotels. Sofitel hotels exist in 52 countries, including China. The Complainants have registered the SOFITEL Mark as a trade mark throughout the world. In particular the Complainants received an International Registration for the SOFITEL mark on August 30, 2007 which has the effect of registering the SOFITEL Mark as a trade mark in China. The Complainants also own a number of domain names linked to websites that are used to book hotels and promote their services, including and . These domain names were registered in 2001 and 1997 respectively.
The Domain Names are identical or confusingly similar to the SOFITEL Mark, as they reproduce the mark in its entirety. The Domain Names then add the geographical term “guangzhou” as a suffix, which reinforces the likelihood of confusion as the Domain Names then refer to a hotel operated by the Complainants in China. Finally the Domain Name reproduces the name of the Sofitel Guangzhou Sunrich, the hotel operated by the Complainants in Guangzhou.
The Respondent has no rights or legitimate interests in the Domain Names as the Respondent is not in any way affiliated with the Complainants, nor have the Complainants authorized or licensed the Respondent to use the SOFITEL Mark, or to register a domain name incorporating the SOFITEL Mark. The Respondent is not commonly known by the name “Sofitel”.
For a period of time prior to the commencement of the proceeding, the Domain Names resolved to a website that offered booking services for the Sofitel Guangzhou Sunrich. This does not amount to a right or legitimate interest.
The fame of the SOFITEL Mark, including its fame in China, where the Respondent is located, means that it is unlikely that the Respondent was unaware of the SOFITEL Mark at the time of registration of the Domain Names. This is reinforced by the fact that the Domain Names resolved to a site offering a booking services for the Sofitel Guangzhou Sunrich. Therefore the Domain Names were registered in bad faith.
The fact that the Respondent was aware of the SOFITEL Mark at the time of registration, and the redirection of the Domain Name to a booking website for the Sofitel Guangzhou Sunrich, indicates that the Respondent registered the Domain Names either to block the Complainants or to mislead Internet users and divert Internet traffic for commercial gain. This amounts to use of the Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainants must have trade or service mark rights, and the Domain Names must be identical or confusingly similar to the Complainants’ trade or service mark.
The Complainants are the owner of the SOFITEL Mark, having registrations for SOFITEL as a trade mark throughout the world, including in China, where the Respondent is based. The SOFITEL Mark is a well-known mark, as confirmed in previous UDRP decisions, including Accor, SoLuxury HMC v. PrivacyP n/a Ian Harding,WIPO Case No. D2011-0863; Accor, SoLuxury HMC v. Yunsung,WIPO Case No. D2010-2198; and Accor, SoLuxury HMC v. Jaewan Lee,WIPO Case No. D2009-0574.
The Domain Names consist of the SOFITEL Mark in its entirety. Both Domain Names then add as a suffix the geographical term “guangzhou”, a major city in China. The domain name , then adds the second suffix “Sunrich” which is the name of a Sofitel hotel located in Guangzhou. The addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name – see Carlsberg A/S v Persona l/ decohouse, decohouse,WIPO Case No. D2011-0972. This is especially so because the Complainants operate a hotel in Guangzhou and Internet users would expect the Domain Names to refer to the Complainants’ operations in Guangzhou. The addition of the suffix “Sunrich” does not reduce the confusion either, since the Complainants’ hotel in Guangzhou is known as the Sofitel Guangzhou Sunrich. A person viewing either of the Domain Names would easily be confused into thinking that they were registered by or otherwise connected with the Complainants.
The Domain Names consist of the SOFITEL Mark and a suffix/suffixes that fail to distinguish the SOFITEL Mark. The Panel finds that the Domain Names are confusingly similar to the Complainants’ SOFITEL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainants in any way and has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the SOFITEL Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Domain Name , for a time after registration, resolved to a site offering a booking service for the Sofitel Guangzhou Sunrich hotel. This does not amount to a legitimate interest as the Respondent is attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainants’ SOFITEL Mark. Such use is not bona fide.
Finally, the Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names’ registration to the Complainants who are the owners of the trade mark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the Respondent, at the time of registration of the Domain Names, knew of the existence of the SOFITEL Mark. This can be inferred from the reputation of the well-known SOFITEL Mark and the fact that, following the registration of the Domain Names, the domain name redirected to a site that offered booking services to the Sofitel Guangzhou Sunrich hotel.
The Respondent’s conduct in registering the Domain Names when it was aware of the Complainants’ rights and lacked rights and legitimate interests of its own amounts to registration in bad faith. Furthermore, the Respondent’s conduct in having the Domain Name redirect to a website promoting the Complainants’ Sofitel Guangzhou Sunrich hotel and offering booking services to that hotel amounts to the Respondent having intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. The fact that the Domain Names are currently inactive does not change that finding as the Respondent could easily re-create that website at any time.
The Panel also finds that the Respondent registered the Domain Names to prevent the Complainants from registering the Domain Names, with the hope of selling the Domain Names to the Complainants for valuable consideration in excess of its costs. The Respondent was, at the time of registration, aware that the Complainants were to open a hotel in Guangzhou known as the Sofitel Guangzhou Sunrich. The Respondent would also have been aware, that the Complainants may have been interested in registering a domain name to reflect the name of the new hotel the Complainants were opening in Guangzhou.
After becoming aware of the registration of the Domain Names, the Complainants’ legal representatives sent cease and desist letters to the Respondent on December 8, 2010 (with reminders on December 16, 2010, December 23, 2010 and January 4, 2011) and August 3, 2011. On August 3, 2011, the Respondent replied, indicating that the Complainants should either wait for the expiry of the Domain Names, or make a bid to purchase the Domain Names on an auction site. The Complainants’ legal representatives then requested that the Domain Names be transferred without payment, a request that the Respondent ignored. The Respondent’s e-mail on August 3 was a prompt for the Complainants to make an offer to purchase the domain name. The request that the Complainants make an offer to purchase the Domain Names, combined with the circumstances of registration and the absence of a legitimate interest in the Domain Names, amounts to the registration and use of the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of 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 Names and be transferred to the Complainants.
Nicholas Smith
Sole Panelist
Dated: February 19, 2012
Full & Egal Universal Law Academy