The Complainants are Soluxury Hmc and Accor of Paris, France represented by Cabinet Santarelli, France.
The Respondent is Federico Guillemaut Despecher of Rosario, Argentina, represented by Daniel Guillermo Navarro, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2015. On December 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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.
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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2016. On January 26, 2016, the Respondent requested an extension to file its Response. In accordance with the Rules, paragraph 5(b), the Center notified the Parties that the new due date for Response was February 4, 2016. The Response was filed with the Center on February 4, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 15, 2016. 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 First Complainant, Soluxury Hmc, is a wholly owned subsidiary of the Second Complainant, Accor. The First Complainant operates a range of hotels under or by reference to the name Sofitel. The Complaint states that First Complainant has 121 hotels with nearly 31,000 rooms in 41 countries. As of December 2014, it had some 27,000 employees and gross revenue in the year to the end of December 2013 of EUR 1.5 billion. It is not clear from the Complaint if this is the only chain of hotels that First Complainant operates or if it operates other chains as well.
According to the Complaint, the First Complainant has been using the trademark MYBED for an exclusive line of bedding products in its Sofitel hotels and which it also offers for sale via websites at "" and "". These products include mattresses, pillows, duvets, pillowcases, covers and bed linen.
The First Complainant has also registered MYBED in stylized form as trademark in a number of countries. These include:
(a) French Trademark No. 3258390 which was filed on November 21, 2003 and registered in International Classes 20, 24 and 43 in respect of:
"wood and bedframes, non-metallic bed fittings including bed bases and mattresses; bedding (except bed linen); pillows, bed linen, bed clothes, hotel services"
(b) International Registration No. 827564, which was filed on May 12, 2004 and which the Complainants say is registered in 25 jurisdictions including Algeria, Germany, Australia, Austria, Benelux, China, Republic of Korea, Cuba, Spain, Egypt, Greece, Hungary and Italy for the same goods and services as indicated for the French Trademark; and
(c) Brazilian Trademarks Nos. 827364270, 827364288 and 827364296 in, respectively, International Classes 20, 24 and 43.
The countries in which the First Complainant has registered its MYBED (stylized) trademark do not include Argentina. The First Complainant does claim to have used its trademark in Argentina before the Respondent registered the disputed domain name. In support of that claim, it points to the announcement on January 21, 2014 of a competition involving "MyBed TM" and "Wallpaper magazine" in "El Diario de Turismo" ("").
On January 30, 2015, the First Complainant applied to register the trademark MYBED BY SOFITEL in stylized form in Argentina in International Classes 20, 24 and 43. The status of these applications is not clear from the record.
According to the Registrar, the disputed domain name was registered on April 28, 2014. It resolves to a website operated by a company the Respondent incorporated, Mybeds S.A. (registered as a corporation on July 23, 2014) which provides a service for booking hotel rooms, tours and travel packages by which hotels with rooms to let may list their rooms and other services on the site. It is apparently a B2B site in that the listings are available to travel and booking agencies which sign up for the service.
On June 24, 2014, the Respondent applied to register MYBEDS as a trademark in Argentina, Nos.
(a) 3334782 in International Class 39 in respect of "Transport; packaging and storage of goods; travel arrangement"; and
(b) 3334783 in International Class 43 in respect of "Services for providing food and drink; temporary accommodation."
The Complainants have opposed the registration of these trademarks. Some form of administrative mediation has occurred, which was unsuccessful. The Complainants claim that this means that the Respondent must contest the registrability of his trademark in the Court or abandon them. It is not clear that the Respondent agrees this is the outcome. The Response focuses on allegations of bad faith by the Complainants in filing the First Complainant's applications in Argentina during the mediation period and the objection to the registration of the First Complainant's trademark in class 43 as a result of the earlier priority date of the Respondent's trademark. In any event, so far as the record shows, the Respondent's trademark applications have not been declared abandoned. Nor do the Annexures in the Complaint show that the Complainant's applications have been registered. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants' trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The First Complainant has proven ownership of the registered trademarks for MYBED in stylized form referred to in section 4 above.
Disregarding the generic Top-Level Domain ("gTLD") ".com" as a functional requirement of the domain name system, the disputed domain name differs from the First Complainant's trademarks by the addition of a letter "s" to make the term plural and the omission of a graphical element.
The graphical element is relatively minor and can be disregarded for the purposes of this inquiry too.
The Respondent points to the generic nature of the terms "my" and "bed", his own search of the Argentinian Trademarks Register to ascertain the availability of his trademark, the prior existence of which is held by the owner of a United States of America trademark registration for MYBED and the addition of the "s" to argue that the disputed domain name is not confusingly similar to the First Complainant's trademark.
On the question of identity or confusing similarity, however, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is a visual and aural comparison. The fact that the Complainants do not have trademarks registered for MYBED in Argentina is irrelevant at this stage of the inquiry. The inquiry is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the First Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
The Second Complainant, Accor, also claims trademark rights arising from its registration and use of a range of domain names. All in all, it asserts 18 domain names, such as , , , , and . The Second Complainant claims that the disputed domain name would be mistaken as part of this family of domain names.
Without deciding whether the Second Complainant has established trademark rights in any or all of these domain names, the Panel cannot find that the disputed domain name is confusingly similar to any of them or to the Second Complainant's "family". The only element common to the disputed domain name and the Second Complainant's domain names is the word "my". That is a basic pronoun. There is no visual or aural resemblance between the disputed domain name and the Second Complainant's domain name family. Accordingly, the Second Complainant's claim fails at this stage of the inquiry. B. Rights or Legitimate Interests
The second requirement the First Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the First Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The First Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. It also emphasises that it acquired its trademark long before the Respondent adopted the disputed domain name and alleges that the Respondent adopted the disputed domain name with full knowledge of the First Complainant's use and reputation in its trademark due to his involvement in the tourism industry in Argentina before he registered the disputed domain name. It points out that the Respondent, through his company's website, is using the disputed domain name in connection with directly competing services in International Class 43. Indeed, the Panel notes that many of the First Complainant's competitor hotel chains are identified as suppliers to the Respondent's website, including Sheraton, Marriott, Holiday Inn, to name just three.
The disputed domain name is plainly not derived from the Respondent's own name. It does correspond to the name of his company, although it appears the company was incorporated under that name around the time or shortly after the disputed domain name was registered.
The Respondent does not directly deny the allegation of knowledge of the First Complainant's trademark. Rather, what he says is that he conducted trademark searches at the Argentinian Trademark Office and established that it was clear to be registered, before he adopted the disputed domain name and went through the process of incorporating his company and started promoting his services. The Respondent also points out the descriptive nature of the term "my bed" and argues that small differences in the competing signs and services are sufficient to avoid confusion.
The Panel is conscious that the Respondent's trademark applications have not proceeded to grant, but are under opposition. Neither party has made submissions on the effect of the First Complainant's (claimed) prior use of the Respondent's prospects of successfully registering MYBEDS as a trademark in Argentina. Also, as a matter of impression, it is not clear that the use the First Complainant has made of its trademark extends in relation to hotel services. Use on mattresses, bed linen, pillowcases and the like would be use directly in relation to those goods. It may be arguable that its use of the trademark on such goods on beds in its hotel rooms, if that is what it has done in Argentina, is also use in relation to hotel services. If the Respondent were to overcome the opposition, however, plainly he would have rights to use the trademark in Argentina. As yet, however, the applications have not proceeded to grant and so have not crystallised in registrations.
The Panel also notes that the Respondent's website does not appear to be directed to Argentina alone. The website proclaims:
"M was created to bring the tourist services of the American continent together. Our goal is to create a distribution network that combines incoming and issuing services of the most important destinations."
A graphic on the website indicates that the Respondent claims to be providing services in both North America and South America. The website is also available in both English and Spanish (but not apparently Portuguese).
The trademark registrations in the Americas identified by the First Complainant extend only to Brazil and Cuba. It has not identified registered trademarks in any other countries in Central, North or South America.
The Respondent also points out that Mybed Inc. has registered Trademark No. 2098534 in the United States of America. That registration dates from 1997. However, it is in International Class 20 in respect of "mattresses and box springs" only.
In these circumstances, the Panel is unable to find that the First Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Complaint must fail. C. Registered and Used in Bad Faith
As neither Complainant can succeed under the Policy on this record, there is no point in considering this requirement. 6. Decision
For the foregoing reasons, the Complaint is denied. However, it is denied without prejudice to the First Complainant's ability to refile if circumstances later emerge that would lead a future panel to question the Respondent's motives when registering the disputed domain name (the Panel notes that the Complainant's trademark oppositions are still pending).
Warwick A. Rothnie
Sole Panelist
Date: March 5, 2016
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