The Complainants are Accor and SoLuxury HMC of Paris, France (the "Complainant"), represented by Dreyfus & associés, France.
The Respondent is Lan Guo Jing of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the Respondent's contact details. On January 19, 2016, the Complainant filed an amended Complaint.
On January 20, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 21, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 25, 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 Complainant is Accor and its subsidiary SoLuxury HMC, one of the world's leading providers of hotel services. The Complainant has been active for over 45 years and operates more than 3,600 hotels in 92 countries worldwide. The group includes hotel chains such as Pullman, Novotel, Mercure and Ibis.
The Complainant's SOFITEL brand is the only French luxury hotel brand with a presence on five continents.
The Complainant is the owner of numerous trademark registrations for the SOFITEL mark around the world.
Through extensive use around the world, the SOFITEL trademark has generated vast good will and has become well-known in connection with hotels.
The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the name "Sofitel". For example: and .
The disputed domain name was registered on September 27, 2015.
The disputed domain name resolves to a website offering the Complainant's goods for sale and contains the logo trademark of the Complainant and the name "Sofitel". 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant further argues that it operates several hotels under the trademark SOFITEL, which is a well-known trademark. The Complainant further argues that the disputed domain name reproduces the Complainant's trademark SOFITEL in its entirety, which previous UDRP panels have considered to be very well-known in the field of hotels.
The Complainant further argues that the disputed domain name combines the geographical term "jingan" with the Complainant's trademark and that this combination enhances the likelihood of confusion since it might lead Internet users into believing that the disputed domain name is authorized by the Complainant and that the website to which it resolves is the official website of the Complainant's future hotel.
The Complainant further argues that the disputed domain name directs to a webpage imitating an official website of the Complainant which reproduces the Complainant's figurative international trademark SOFITEL as well as other trademarks of the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized by the Complainant to use and register the disputed domain name. Moreover, the Respondent has no prior rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent has registered around 90 other domain names which mostly reproduce the names of hotels of the Complainant's competitors.
The Complainant further argues that the Respondent never answered its cease-and-desist letter.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that it is implausible that the Respondent was unaware of the Complainant when registering the disputed domain name.
The Complainant further argues that bad faith is found where the disputed domain name is obviously connected with a well-known trademark.
The Complainant further argues that the Respondent's use of the disputed domain name indicates bad faith since the website under the disputed domain name consists of an imitation of an official website of the Complainant, reproducing the SOFITEL trademark and other trademarks owned by the Complainant. The disputed domain name offers booking services to the hotel, and leads Internet users to assume that it is the Complainant.
The Complainant further argues that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of initial interest of confusion.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of Latin characters, rather than Chinese characters;
b) According to the evidence provided by the Complainant, the disputed domain name resolves to a website operating and displaying content both in English and in Chinese;
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous trademark registrations for the SOFITEL mark around the world. For example: International trademark registration no. 863332, designating China, of August 26, 2005; International trademark registration no. 642172, designating China, of August 31, 1995; International trademark registration no. 614992, designating China, of October 29, 1993 and more.
The Complainant's rights in the SOFITEL mark have been established in numerous UDRP decisions (see, e.g., Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1650; Accor, SoLuxury HMC v. Zeng Zheng,WIPO Case No. D2013-1541; Accor, SoLuxury HMC v. Yin Wei Fen,WIPO Case No. D2012-0553 and Accor and SoLuxury HMC v. "m on",WIPO Case No. D2012-2262).
The Panel finds the disputed domain name integrates the Complainant's SOFITEL trademark in its entirety, as a dominant element.
The additional term "jingan" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, since it is a geographical term for a location where the Complainant conducts or plans to conduct business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702).
The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the SOFITEL trademark, or a variation thereof, and that the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and as such did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence which clearly shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark SOFITEL and long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the SOFITEL trademark at least since the year 1993. This trademark has been used extensively worldwide. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name and has been used widely in the local language variant (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the domain name is resolved, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name is resolved.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Further, the Complainant submitted evidence proving that the Respondent has incorporated the SOFITEL marks and logos on its website. This use is made in order to attract consumers for commercial gain by purporting to sell services for the Complainant's products. That practice confirms not only the Respondent's awareness of the Complainant and its products, but also the Respondent's actual use of the Complainant's name in bad faith (see Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170).
In the instant case, the Complainant has provided evidence to show that its SOFITEL trademark has a strong reputation and is widely known worldwide and specifically in China. The record also shows that the Respondent provided no evidence and did not respond to the Complaint or to the cease-and-desist letter the Complainant sent him. These facts lead to a clear conclusion that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of this mark. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the Complainant's trademark registration amounts to bad faith".
The disputed domain name is confusingly similar to the Complainant's famous trademark. Previous UDRP panels have ruled, in the context of commercial websites, that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited, supra). To this end, prior UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's lack of response to the cease and desist letter sent by the Complainant is a further indication of the Respondent's bad faith registration and use of the disputed domain name.
Another indication of the Respondent's bad faith use is the incorporation of the Complainant's well-known trademark together with the Complainant's future destination for a hotel into the disputed domain name by the Respondent, who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The circumstances of this case indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name.
In light of the Complainant's registered trademark and the Respondent's use of a confusingly similar disputed domain name, offering the Complainant's services, using the Complainant's trademarks and all the other circumstances noted above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: March 11, 2016
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