The Complainant is Accor of Issy-Les-Moulineaux, France; SoLuxury HMC of Issy‑Les‑Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Yanchunhua of Xiamen, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, 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 October 19, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on November 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2018.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 5, 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 Complainant is a French multinational hotel group which operates a portfolio of more than 4,000 hotels in 100 countries worldwide. The Complainant’s hotel brands include “Raffles”, “Fairmont”, “Pullman”, “Swissotel”, “Grand Mercure”, “Novotel”, “Mercure”, “Ibis”, and “Sofitel”. Founded in 1964, there are currently more than 100 “Sofitel” hotels in some 40 countries around the world, including over 20 SOFITEL hotels in China (including one in Shanghai called “Sofitel Shanghai Sheshan Oriental”)
The Complainant owns trade mark registrations for the SOFITEL trade mark in various jurisdictions in connection with its hotels and restaurant services, including the following trade mark registrations:
Mark
Country
Class
Registration No.
Registration Date
SOFITEL
International designating China
35, 39, 43
863332
August 26, 2005
SOFITEL
International designating China
35, 36, 37, 42
642172
August 31, 1995
SOFITEL
International designating China
1-42
406255
April 18, 1974
The Complainant also operates websites at the following domain names to provide information about its SOFITEL hotels:
- , registered on April 11, 1997;
- , registered on December 17, 2002;
- , registered on March 17, 2003.
The disputed domain name was registered on June 20, 2018. It redirects to a landing page with links to various gambling websites in Chinese (see Annexes 1 and 6 of the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its SOFITEL trade mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
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 6.1 Procedural Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
Although the Respondent appears to be a native Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the disputed domain name is composed of an English name and an English word; and
(c) according to the reverse WhoIs results submitted by the Complainant, the Respondent has registered numerous other domain names which comprise Latin characters and English words, such as , , , , , and .
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to provide arguments as to the language of proceeding and to present its case in this proceeding; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Procedural Issue: Consolidation of Multiple Complainants
The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group as the Second Complainant is a wholly owned subsidiary of the First Complainant. The Second Complainant owns the SOFITEL trade mark. The Panel finds that the Complainants have a common grievance against the person named as the disputed domain name registrant and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to in this decision collectively as “the Complainant” except as otherwise indicated.
See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 6.3 Substantive Issues:
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in SOFITEL by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark SOFITEL in its entirety. The addition of the letters “jj” and the words “oriental” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. See section 1.8 of WIPO Overview 3.0. The addition of the generic Top-Level Domain (“gTLD”) “.com” in this case does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. See section 1.11 of WIPO Overview 3.0.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the SOFITEL trade mark or to seek registration of any domain name incorporating the SOFITEL trade mark. The Respondent appears to be an individual by the name of “Yanchunhua”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “sofitel”.
According to the evidence submitted by the Complainant, the disputed domain name currently resolves to a landing page in Chinese with links to various gambling websites, which is likely to generate pay-per-click revenue for the Respondent. Using a domain name which incorporates a well-known trade mark to divert Internet traffic to gambling websites does not constitute a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish rights or legitimate interests in the disputed domain name. Since the Respondent did not file a response to the Complaint and has thus failed to offer any explanation for the registration of the disputed domain name, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under 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 a disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the 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 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel accepts that the Complainant and its trade mark SOFITEL enjoy a strong reputation worldwide and have a significant online presence. Sofitel, being an invented word, is also highly distinctive. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the SOFITEL trade mark and its extensive use by the Complainant to the Respondent. A strong presumption thus arises that the Respondent was aware of the Complainant and its trade marks when he or she registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
The Panel notes that the Respondent has registered other domain names incorporating well-known third party brand names, such as , >, and (see Annex 22 of the Complaint). This pattern of conduct suggests that the Respondent is engaged in cybersquatting activities, and has in all likelihood registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The circumstances referred to in paragraph 4(b)(ii) of the Policy clearly apply.
As the disputed domain name comprises the Complainant’s trade mark SOFITEL and the word “oriental”, it is likely that Internet users may be confused and wrongly believe that the disputed domain name is associated with the Complainant’s “Sofitel Shanghai Sheshan Oriental” hotel or is otherwise controlled by or somehow associated with the Complainant. This creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, by redirecting Internet traffic searching for “SOFITEL” to a landing page with links to various gambling websites likely to generate pay-per-click revenue for the Respondent, the Respondent clearly seeks to capitalise on the commercial value of the Complainant’s SOFITEL trade mark to attract financial gain. There is also evidence in the Complaint that an email server has been configured on the disputed domain name with a real risk that the Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with the Complainant. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy apply to the present case. Such use of the disputed domain name cannot be in good faith.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: December 23, 2018
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