Complainant is Accor SA of Issy-Les-Moulineaux, France, and Swissôtel Management GmbH of Kloten, Switzerland, represented by Dreyfus & associés, France.
Respondent is Wen Hao of Changsha, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 29, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on November 30, 2018. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2018.
The Center appointed Yijun Tian as the sole panelist in this matter on January 16, 2019. 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
Complainant 1 Accor SA is a company incorporated in Issy-Les-Moulineaux, France. It is one of the world leaders in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. Based on the information provided by Complainant, Accor operates more than 4,500 hotels in 109 countries worldwide and over 660,500 rooms (Annex 3 to the Complaint). The Accor network comprises 260 hotels located in China including over four Swissôtel hotels.
Complainant 2, Swissôtel Management GmbH, is a company incorporated in Kloten, Switzerland. Accordingly to the Complaint, Swissôtel is an Accor subsidiary at 100%, consequently, Complainant company belongs to the same group and is acting against the same registrant for the same grievance. Swissôtel is present in around 17 countries and counts up to 31 hotels with 13,432 rooms (Annex 3 to the Compliant). (“Complainant 1” and “Complainant 2”, hereinafter “Complainant”.)
Complainant has exclusive rights in multiple trademarks incorporating its SWISSÔTEL marks (the “SWISSÔTEL Marks”). Complainant is the exclusive owner of the registered SWISSÔTEL-related marks globally (Annex 4 to the Complaint), including international trademark registration SWISSÔTEL (registration no. 652800, registered since September 18, 1995), European Union trademark registration SWISSÔTEL (registration no. 002285567, registered on November 8, 2002); and Chinese trademark registration SWISSÔTEL (registration no. 13137162, registered since April 21, 2015). Complainant also owns a few domain names containing the SWISSÔTEL mark, such as registered on December 16, 1996 (Annex 5 to the Complaint).
Respondent is Wen Hao of Changsha, China. The disputed domain name was registered on April 10, 2018, which is long after the SWISSÔTEL Marks were registered. According to the Complaint and relevant evidence, the disputed domain name resolved to webpages displaying content related to gambling activities (Annex 1 to the Compliant). The disputed domain name currently resolves to an inactive website. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar with the trademarks SWISSÔTEL in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is located in France and Switzerland and has no knowledge of Chinese. To proceed in this language, Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings.
(b) The use of a language other than English in the proceeding would impose a burden on Complainant which must be deemed significant in view of the cost for the present proceedings.
(c) In many relevant UDRP decisions, the panel decided that since Complainant was unable to communicate in the language of the registration agreement, the proceeding would inevitably be delayed unduly, and Complainant would have to incur substantial expenses if Complainant were to submit all documents in said language (Annex 10 to the Complaint).
(d) The domain name includes only Latin characters which strongly suggests that Respondent has knowledge of languages other than Chinese. It can thus be assumed Respondent has knowledge of English
(e) English is currently the primary language for international relations, and it is one of the working languages of the Provider.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oréal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from France, Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name include the English words “the”, and Latin characters “stamford” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name was registered in Latin characters and particularly in English language, rather than in Chinese script; (b) the webpage resolved by the disputed domain name contains English words, such as “copyright” and “All rights reserved” (Annex 1 to the Complaint); (c) the Center has notified Respondent of the proceeding in both Chinese and English; (d) the Center informed Respondent that it would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds 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 his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantive Matters
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is 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 name; 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) - (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SWISSÔTEL Marks acquired through registrations. Based on the information provided by Complainant, the SWISSÔTEL marks have been registered in jurisdictions throughout the world since 1995 (including Chinese registrations), and Complainant has a widespread reputation as one of the world leaders in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services.
The disputed domain name comprises the SWISSÔTEL Mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by suffixes “-” “the” and the geographical term “stamford”, as well as the generic Top-Level Domain (“gTLD”) suffix “.com” to the SWISSÔTEL marks. This does not prevent a finding of confusing similarity between Complainant’s registered trademarks and the disputed domain name. In relation to the gTLD suffix, WIPO Overview 3.0 further states:
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).
Thus, the Panel finds that disregarding the suffixes “-”, “the”, the geographical term “stamford”, and gTLD suffix “.com”, the disputed domain name is confusingly similar to the SWISSÔTEL marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has been commonly known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
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 shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a 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; WIPO Overview 3.0, section 2.1 and cases cited therein).
Complainant has rights in the SWISSÔTEL Marks since 1995. According to Complainant, Complainant is one of the leading companies in the field of hotels, upscale and luxury hospitality services. It operates more than 4,500 hotels in 109 countries worldwide and over 660,500 rooms, including 260 hotels located in China. Moreover, Respondent is not an authorized dealer of SWISSÔTEL branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; 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 name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Swissôtel” in the disputed domain name. Rather, Respondent appears to attempt to take advantage of the goodwill associated with Complainant’s SWISSÔTEL Marks to attract Internet users to a money-earning scheme, presumably for commercial gain. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SWISSÔTEL Marks or to apply for or use any domain name incorporating the SWISSÔTEL Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on April 10, 2018, which is long after the SWISSÔTEL Marks became widely known. The disputed domain name is confusingly similar to Complainant’s SWISSÔTEL Marks;
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the Panel finds that the disputed domain name resolved to websites displaying content related to gambling activities, and are not currently associated with active website.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds, also taking into consideration the Panel’s findings below, that Complainant has established the second element 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 name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration 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 name; or
(ii) 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 disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website 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 Complainant has a widespread reputation in the SWISSÔTEL Marks with regard to its products or services. Complainant has registered its SWISSÔTEL Marks internationally since 1995, including trademark registrations in China. Complainant has 260 hotels located in China including over four Swissôtel hotels. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name.
The Panel therefore finds that the SWISSÔTEL mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith.” See also 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 name was registered in bad faith with the intent to create an impression of an association with Complainant’s SWISSÔTEL-branded products or services. b) Used in Bad Faith
As noted above, the disputed domain name has been used to attract Internet users seeking Complainant’s websites displaying contents of online gambling actives, presumably for the commercial gain of Respondent. Such conduct falls squarely within the language of paragraph 4(b)(iv) of the Policy.
Further, given the lack of response, the Panel cannot envision any other plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the Panel concludes that current inactive use of the disputed domain name by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name 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 name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: February 9, 2019
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