The Complainants are Accor SA of Issy-Les-Moulineaux, France; SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Xu Yang Hui of Gui Lin, Guang Xi, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with HiChina Zhicheng Technology Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2018. On March 27, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain names. On March 28, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 6, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 9, 2018, the Complainant confirmed its request that English be the language of the proceeding and that it has nothing further to add. The Respondent did not comment on the language of the proceeding.
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 April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2018.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 11, 2018. 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’ company names are Accor SA and SoLuxury HMC (“SoLuxury”). SoLuxury is an Accor SA subsidiary at 100 percent. Accor SA operates more than 4,100 hotels with over 570,000 rooms of varying levels of accommodation. This group includes Pullman and Sofitel.
Pullman is an executive lifestyle upscale hotel brand with 119 hotels worldwide. Hotel Pullman Taiyuan is an upscale international hotel that offers 279 well-appointed rooms, modern dining, event space and comprehensive facilities.
Sofitel is a French luxury hotel brand with 131 hotels in almost 41 countries (and more than 30,000 rooms). Hotel Sofitel Shenyang Lido offers 590 guest rooms, suites and serviced apartments featuring luxury amenities.
The Complainants are the owner of multiple trademark registrations for the PULLMAN and SOFITEL marks.
Trademark
Jurisdiction
Registration No.
Registration Date
Classes
SOFITEL
International Registration
863332
August 26, 2005
35, 39, 43
SOFITEL
International Registration
614992
October 29, 1993
35, 36, 37
SOFITEL
International Registration
939096
August 30, 2007
35, 36, 43, 44
PULLMAN
International Registration
1197984
November 28, 2013
43
PULLMAN
China
4734292
February 7, 2009
43
The disputed domain name was registered on June 11, 2016. The disputed domain name was registered on June 13, 2016. Both disputed domain names are in use for websites offering hotel services at Taiyuan and Shenyang respectively. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ PULLMAN and SOFITEL marks. The Complainants have rights in the PULLMAN and SOFITEL marks by virtue of their trademark registrations. When comparing the disputed domain names to the Complainants’ trademark, the comparison should be made to the second-level portion of the disputed domain names only. The Top-Level Domain (“TLD”) “.com” should not be considered. The first disputed domain name consists of the PULLMAN mark plus the term “taiyuan”, which is a geographical location. The second disputed domain name consists of the SOFITEL mark and “shenyang”, which is a geographical location. The generic terms “taiyuan” and “shenyang” do not negate the confusing similarities. Additionally, the Respondent’s use of the disputed domain names contributes to the confusion because the Respondent is using the disputed domain names to direct Internet users to websites offering the same services as the Complainants’ sites. This indicates that the Respondent intended the disputed domain names to be confusingly similar to the Complainants’ trademarks.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not sponsored by or affiliated with the Complainants. The Complainants have not given the Respondent permission to use the Complainants’ trademark in any manner, including in the disputed domain names. The Respondent is not commonly known by the disputed domain names. The WhoIs data for the disputed domain names identifies the registrant as “Xu Yang Hui”, which does not resemble the disputed domain names in any way. The Respondent’s use of the Complainants’ mark in the Respondent’s domain name website is a direct attempt to take advantage of the fame and goodwill that the Complainants have built in their brands.
Finally, the Complainants contend that the Respondent registered and is using the disputed domain names in bad faith. The Complainants’ PULLMAN and SOFITEL marks enjoy a substantial and widespread reputation and have been in use since 2007 and 1964 respectively, well before the Respondent registered the disputed domain names. By registering the disputed domain names that incorporate the Complainants’ PULLMAN and SOFITEL marks in their entirety and adding the terms “taiyuan” and “shenyang”, the Respondent has created the disputed domain names confusingly similar to the Complainants’ mark and domain name. The PULLMAN and SOFITEL marks are so associated with the Complainants that the Respondent’s use of them strongly implies bad faith. It is unlikely that the Respondent coincidentally chose the disputed domain names without knowledge of the Complainants because the Respondent added the terms “taiyuan” and “shenyang” as they related to the Complainants’ hotel business activities there. At the time of the registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainants’ trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.
Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain names to create a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainants’ marks in the disputed domain names where the mark is the main feature and attempting to profit from such confusion by using the website associated with the disputed domain names to sell similar products.
The Complainants request that the disputed domain names be transferred to them. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have rights to the PULLMAN and SOFITEL marks. The Complainants have established that they are the registered owner of international trademark registrations of the PULLMAN and SOFITEL marks.
The disputed domain name contains the elements “pullman”, “taiyuan”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther,WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer,WIPO Case No. D2002-0329. The addition of the word “taiyuan” does not distinguish the disputed domain name from the PULLMAN mark to avoid a finding of confusing similarity. See Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel,WIPO Case No. D2015-0210. PULLMAN remains the dominant part of the disputed domain name.
The disputed domain name contains the elements “sofitel”, a hyphen, “shenyang”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The addition of the word “shenyang” does not distinguish the disputed domain name from the SOFITEL mark to avoid confusing similarity. See Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, supra. SOFITEL remains the dominant part of the disputed domain name.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademarks. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the respondent may demonstrate rights or legitimate interests in the disputed domain name(s) by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent 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.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainants contend, and the Respondent does not deny, that the Complainants never authorized the Respondent to use their PULLMAN or SOFITEL mark or to register any domain name incorporating those trademarks. The Respondent is not affiliated with the Complainants in any way.
The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent uses the disputed domain names to publish hotel services websites that offers the same services as the Complainants’ websites and which could be confused with the Complainants’ websites and services. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a website using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Additionally, the PULLMAN and SOFITEL marks are well -known worldwide. In the absence of evidence to the contrary, knowledge of the Complainants and their rights in the PULLMAN and SOFITEL marks may be imputed to the Respondent at the time of registration of the disputed domain name. See Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945. (“The inevitable conclusion is that th[is] word[ ] [is] not one[ ] that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant.”). Indeed, the Respondent’s addition of the terms “taiyuan” and “shenyang”, which bear direct connections to the services offered by the Complainants under the PULLMAN and SOFITEL marks, indicate that the Respondent was aware of the Complainants, their services and the PULLMAN and SOFITEL marks.
The Respondent is not making any noncommercial or fair use of the disputed domain names. To the contrary, the evidence in the record indicates that the Respondent uses the disputed domain names for commercial gain by seeking to create an impression of an association with the Complainants and to misleadingly divert consumers to the Respondent’s competing websites.
Accordingly, the record indicates that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name (s) in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The respondent has registered the disputed 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) The respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent registered the disputed domain names in bad faith. The Respondent undoubtedly was aware of the Complainants and their PULLMAN and SOFITEL marks at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainants and their PULLMAN and SOFITEL marks are known worldwide. The Respondent must have had the Complainants’ famous trademark in mind when the Respondent registered the disputed domain names, as evidenced by the Respondent’s use of the disputed domain names to direct Internet users to websites offering services that compete with those of the Complainants. See Balenciaga v. liu zhixian, zhixian liu,WIPO Case No. D2010-1831. Moreover, the Respondent included the terms “taiyuan” and “shenyang”, words that bear a direct connection to the Complainants’ Pullman and Sofitel-branded services, in the disputed domain names, further indicating that the Respondent was well aware of the Complainants, their services and the PULLMAN and SOFITEL marks. The Respondent’s registration of the disputed domain names incorporating the Complainants’ marks, being fully aware of the Complainants’ rights in the marks, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
The Respondent also uses the disputed domain names in bad faith. By using the disputed domain names to link to websites that promote and offer competing services, the Respondent conveyed the impression that the Respondent’s websites were affiliated with or created, endorsed or sponsored by the Complainants. See Dow Jones & Company, Inc. v. Down Johns Update,WIPO Case No. D2000-0495. The Respondent’s websites do not offer any statements indicating that the Respondent and the websites lack affiliation with the Complainants. The Respondent has intentionally attempted to attract Internet users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the Complainants’ PULLMAN and SOFITEL marks as to the source, sponsorship, affiliation, or endorsement of such websites. These activities amount to bad faith use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. See id. Additionally, the Respondent’s failure to respond to the Complainants’ efforts to contact the Respondent for settlement outside of this proceeding “provide[s] strong support for a determination of ‘bad faith’ registration and use.” Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330.
For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain names is 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 Accor SA, and the disputed domain name be transferred to the Complainant SoLuxury HMC.
Kimberley Chen Nobles
Sole Panelist
Date: May 17, 2018
Full & Egal Universal Law Academy