Complainants are Accor and SoLuxury HMC of Paris, France represented by Dreyfus & associés, France.
Respondent is Yin Wei Fen of Zhe Jiang, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 19, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On March 19, 2012, GoD, LLC. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2012.
The Center appointed Yijun Tian as the sole panelist in this matter on May 1, 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 A. Complainant
Complainants are Accor and SoLuxury HMC, companies incorporated in Paris, France. Accor is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services, which operates more than 4,200 hotels in 90 countries worldwide. Accor owns numerous trademark registrations for marks that consist of or include the term “Pullman Hotels” worldwide, including International Trademark 937197 designating China since July 24, 2007 (Annex 15 to the Complaint). SoLuxury HMC is the Accor’s subsidiary, which operates in 52 countries worldwide. It owns numerous SOFITEL trademark registrations across the world, including International Trademark 939096, designating China since August 30, 2007 (Annex 16 to the Complaint)
In addition, Complainants operate domain names reflecting their marks in order to promote their services (Annexes 5 and 6 to the Complaint), including (among others): registered on April 11, 1997 and registered on March 21, 1999. B. Respondent
Respondent (identified as Yin Wei Fen of Zhe Jiang, China) registered the disputed domain names both on June 25, 2011. The disputed domain names resolve to websites displaying booking services and ascribing the addresses of the SOFITEL SHANGHAI HYLAND and PULLMAN SHANGHAI SKYWAY hotels respectively. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- Complainants and their trademarks PULLMAN HOTELS AND RESORTS and SOFITEL enjoy a worldwide reputation.
- The disputed domain names are identical or at least confusingly similar to Complainants’ trademarks SOFITEL and PULLMAN.
- The disputed domain names reproduce Complainants’ trademarks in their entirety, which previous UDRP panels have considered to be well-known, including in China.
- The association of the term “hyland” in to Complainants’ mark SOFITEL reinforces the likelihood of confusion because this domain name refers to a hotel operated by Complainants in China bearing the name of SOFITEL SHANGHAI HYLAND (Annex 8 to the Complaint).
- The association of “skyway” in to Complainants’ mark PULLMAN heightens the likelihood of confusion in the consumer’s mind as there is one PULLMAN hotel in Shanghai run under the name PULLMAN SHANGHAI SKYWAY (Annex 9 to the Complaint).
- The adjunction of the names of existing hotels used by Respondent to Complainants’ trademarks does not exclude user confusion. Such an addition rather increases the likelihood of confusion since Internet users may mistakenly believe that the hotels referred to in the disputed domain names are affiliated in some way to the Complainant, which is not the case.
- The association of the generic word “hotel” to Complainants’ marks reinforces the likelihood of confusion because the disputed domain names refer to Complaints’ main business.
- It have been well established by past UDRP panels that the mere addition of the extension “.com” is not taken into consideration when examining the identity or similarity between the Complainants’ marks and the disputed domain names.
- The sole adjunction of a hyphen in the domain name is not sufficient to lessen the risk of confusion between the disputed domain name and Complainants’ mark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
- Respondent is not in any way affiliated with Complainants, nor have Complainants authorized or licensed Respondent to use their marks, or to seek registration of any domain names incorporating the said marks.
- Respondent has no prior rights or legitimate interests in the disputed domain names. The registrations of the SOFITEL and PULLMAN marks preceded the registration of the disputed domain names for years (Annexes 3 and 15 to the Complaint)
- Respondent is not commonly known by the names “Sofitel” and/or “Pullman”.
- Respondent does not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of services.
- According to the websites that the disputed domain names resolve to, Respondent has adduced itself as operating an official website which has had the endorsement of Complainants, which is not the case.
- Internet users can book hotels through both of the Respondent’s websites. Through this online form, it is likely that Respondent obtains confidential information like credit card numbers and personal identification numbers to which it might derive some economic benefits. Thus, Respondent may be committing fraud commonly known as phishing.
- Respondent did not reply to any cease-and-desist letters and reminders from Complainants (Annexes 12 and 13 to the Complaint). The address given by Respondent was inaccurate. (Annex 14 to the Complaint).
(c) The disputed domain names were registered and are being used in bad faith.
1) Registration in bad faith
- It is implausible that Respondent was unaware of Complainants when registering the disputed domain names. Complainants are well known in the world and in particular in China where Respondent is located. Complainants operate 110 hotels in China, and own several international trademarks registrations designating China.
- SOFITEL and PULLMAN are well-known marks throughout world. (Annex 17 to the Complaint).
- Respondent was aware of the existence of Complainants’ marks and of the SOFITEL SHANGHAI HYLAND and PULLMAN SHANGHAI SKYWAY hotels both located in Shanghai.
- Previous cases showed that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith.
- The use of the disputed domain names suggest that Respondent was perfectly aware of Complainants and their marks. Respondent passes itself off as Complainants. The websites resolved to by the disputed domain names feature pictures of the hotels SOFITEL SHANGHAI HYLAND and PULLMAN SHANGHAI SKYWAY. They also include a booking system and display Complainants’ hotel addresses.
- A copyright line reads “Copyright Pullman Shanghai Hotels” and “Copyright Sofitel Hyland Shanghai Hotels”.
- Respondent’s pattern of conduct consists of phishing. Respondent used the disputed domain names in order to obtain confidential data and adduced itself as having an official website owned by Complainants.
- Respondent uses inaccurate information in the WhoIs contact details.
2) Use in bad faith
- There is little doubt in this case that Respondent was aware that SOFITEL and PULLMAN enjoyed a substantial reputation worldwide and specifically in China. The disputed domain names resolve to a page displaying a booking service. Complainants’ marks are also reproduced. Respondent passes itself off as Complainants and utlizes the address of the SOFITEL SHANGHAI HYLAND and PULLMAN SHANGHAI SKYWAY hotels on its websites.
- Such use of the disputed domain names were not authorized by Complainants.
- Previous UDRP panels have considered that in the absence of any license or permission from Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed.
- Many Internet users attempting to visit Complainants’ website have ended up on the web pages set up by Respondent.
- The fact that the Respondent’s chose to remain silent to the Complainants’ many overtures to address the dispute is a further demonstration of the bad faith on the part of the Respondent (Annex 38 to the Complaint).
- Respondent registered the disputed domain names to prevent Complainants from reflecting their trademarks in the disputed domain names. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by respondent are identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainants have rights in numerous trademark registrations worldwide that consist of or contain the marks SOFITEL or PULLMAN, including trademarks that designate China, since 2007 (Annexes 15 and 16 to the Complaint). Complainants enjoy a widespread reputation in the hospitality industry around the world and have 110 hotels located in China.
The disputed domain name comprises the PULLMAN mark in its entirety. The only difference from the PULLMAN mark is the addition of the English words “skyway” and “hotel”. The Panel finds that these do not eliminate the confusing similarity between Complainants’ registered PULLMAN mark and the disputed domain name.
The disputed domain name comprises the SOFITEL mark in its entirety. The only difference from the SOFITEL mark is the addition of “-” and the English words “hyland” and “hotel”. The Panel finds that these do not eliminate the confusing similarity between Complainants’ registered SOFITEL mark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. HK-0500065).
The Panel finds that the mere addition of the descriptive terms “skyway hotel” as a suffix to Complainants’ mark PULLMAN fails to distinguish the disputed domain name from the mark PULLMAN. By contrast, it may increase the likelihood of confusion of consumers, because there is a PULLMAN hotel in Shanghai run under the name PULLMAN SHANGHAI SKYWAY (Annex 9 to the Complaint). Consumers who visit may be likely to be confused and may falsely believe that the disputed domain name was operated by Complainants for providing hotel booking services.
In the same vein, the Panel also finds that the mere addition of the descriptive terms “hyland” and “hotel” (and with the “-” in the middle the “hyland” and “hotel”) as a suffix to Complainants’ mark SOFITEL fails to distinguish the disputed domain name from the mark. By contrast, it may increase the likelihood of confusion of consumers, because the disputed domain name refers to a hotel operated by Complainants in China bearing the name of SOFITEL SHANGHAI HYLAND (Annex 8 to the Complaint). Consumers who visit may be confused and may falsely believe that the disputed domain name was operated by Complainants for providing hotel booking services.
Thus, the Panel finds that the additions to the disputed domain names are not sufficient to negate the confusing similarity between the disputed domain names and Complainants’ trademarks in which Complainants have rights. (See Swarovski Aktiengesellschaft v. Hao Chen,WIPO Case No. D2011-1223; Groupe Auchan v. Zhenghui, WIPO Case No. D2011-2123).
The Panel therefore holds that Complainant fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate non-commercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, 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 to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 and cases cited therein).
In the present case, Complainants have rights in the SOFITEL and PULLMAN marks throughout the world, including in China (Annexes 15-16 to the Complaint). According to the information provided by Complainants, Respondent is not an authorized agent of the SOFITEL or PULLMAN branded hotels. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain names or reasons to justify the choice of the term “SOFITEL” or “PULLMAN” in their business operations. There has been no evidence to show that Complainants have licensed or otherwise permitted Respondent to use the SOFITEL or PULLMAN marks or to apply for or use any domain names incorporating the SOFITEL or PULLMAN marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names were registered on June 25, 2011, which is after the date Complainants registered the SOFITEL or PULLMAN marks in China (since 2007), and is long after Complainants registered its domain names (since 1997) and (since 1999). The disputed domain names are identical or confusingly similar to Complainants’ SOFITEL or PULLMAN marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to Complainants, Respondent adduced itself as owning the official websites of the Sofitel and Pullman hotels in Shanghai (with the endorsement of Complainants), which is not the case, and is using the websites with the disputed domain names to offer online hotel booking services.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complainant fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s web site or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainants have a widespread reputation in the SOFITEL and PULLMAN marks with regard to its hospitality services. Complainants have registered the SOFITEL and PULLMAN marks throughout the world, including in China. Based on the information provided by Complainants, Complainants are well-known in the world (Annex 17 to the Complaint) and in particular in China, where Respondent is located. Complainants operate 110 hotels in China, and own several international trademarks covering China.
It is not conceivable that Respondent would not have had actual notice of Complainants’ trademark rights at the time of the registration of the disputed domain names (in 2011).
Moreover, Respondent has not replied to any cease-and-desist letters and reminders Complainant sent (Annexes 12 and 13 to the Complaint), and has chosen not to formally respond to Complainants’ allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).”
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainants’ SOFITEL and PULLMAN marks.
b) Used in Bad Faith
Complainants have adduced evidence to prove that by using domain names which are confusingly similar to the Complainants’ marks, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Respondent currently uses the disputed domain names and to offer hotel booking services. The websites resolved to from the disputed domain names feature pictures of the hotels SOFITEL SHANGHAI HYLAND and PULLMAN SHANGHAI SKYWAY, and display Complainants’ hotels addresses. A copyright line reads “Copyright Pullman Shanghai Hotels” and “Copyright Sofitel Hyland Shanghai Hotels”.
Given the widespread reputation of the SOFITEL and PULLMAN marks, the Panel finds that the public, particularly a consumer in China, is likely to be confused into thinking that the disputed domain names and have a connection with Complainants, contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve to. In other words, Respondent has, through the use of confusingly similar domain names, created a likelihood of confusion with the SOFITEL and PULLMAN marks owned by the Complainants. Noting also that apparently no clarification as to Respondent’s relationship to Complainants is made on the homepages of the disputed domain names, Internet users may be led to believe that the disputed domain names are either owned by Complainants or are the official authorized partners of Complainants, which is not the case. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the disputed domain names are used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain names, which are confusingly similar to Complainants’ well-known trademarks, intended to ride on the goodwill of Complainants’ trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainants. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve to are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 disputed domain names and be cancelled.
Yijun Tian
Sole Panelist
Dated: June 6, 2012
Full & Egal Universal Law Academy