The Complainants are Accor and SoLuxury HMC, France, represented by Dreyfus & associés, France.
The Respondent is Parihar, Mr Parihar, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2019, 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. On August 21 and 22, 2019, the Center received five email communications from a third party. On August 27, 2019, after no Response was received, the Center indicated to the Parties it would proceed to appoint the Administrative Panel. On August 28, 2019, the Center received a request from the Respondent to extend the due date for Response pursuant to paragraph 5(e) of the Rules, which the Center subsequently granted, and the new Response due date was September 6, 2019. On September 6, 2019, the Center received an email communication from the Respondent, requesting a further extension of the deadline in which to submit its Response, which the Center declined to extend.
On September 9, 2019, the Center notified the Parties it would proceed to appoint the Administrative Panel. On September 10, 2019, the Center received an email communication from the Respondent in response to which the Center sent an email communication to the Parties inviting them to explore settlement negotiations. The Complainants requested suspension of the proceeding on September 16, 2019, and the proceeding was suspended on September 17, 2019. The Respondent sent an informal email communication to the Center on September 18, 2019. On September 19 and 25, 2019, the Center received two email communications from the Respondent. On October 16, 2019, the Complainants requested an extension to the suspension period. On November 14, 2019, the Complainants requested a further extension to the suspension period, which the Center granted on November 26, 2019. On December 26, 2019, the Complainants requested the Center to reinstitute the proceeding. The proceeding was reinstituted on December 30, 2019.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 9, 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.
On January 9, 2019, the Center received an email from the Respondent asserting that the registration of the disputed domain name had not been renewed and requesting that this proceeding be suspended.
4. Factual BackgroundThe Complainant SoLuxury HMC is a wholly owned subsidiary of the Complainant Accor. Accor is a leading global hotel operator with more than 4,200 hotels in 100 countries worldwide and operates under numerous brands. The Complainant SoLuxury HMC was founded by the Complainant Accor in 1964 as a French international hospitality brand and operates under the brand SOFITEL. There are 130 SoLuxury HMC hotels around the world include 40 hotels in Asia including a SoLuxury HMC hotel in Mumbai, India, that opened on December 26, 2011. For the purposes of this proceeding the Complainants shall be considered an appropriate group to bring a consolidated action against the Respondent.
The Complainants own the following registered Marks:
International trademark SOFITEL n° 863332 registered on August 26, 2005, duly renewed, covering services in classes 35, 39, and 43;
International trademark SOFITEL n° 939096 registered on August 30, 2007, duly renewed, covering services in classes 35, 36, 43, and 44;
Indian trademark SOFITEL n° 1238482 registered on September 19, 2003, duly renewed and designating services in class 42;
Indian trademark SOFITEL n° 1596989 registered on August 31, 2007, duly renewed and designating services in class 42.
The Complainants’ mark SOFITEL shall be referred to as the “Mark” in this Decision.
The Complainants have registered and own the following domain name that incorporates the Mark and promotes the Complainants’ hotel services:
The disputed domain name was registered by the Respondent on December 29, 2011. Until recently, the disputed domain name resolved to a website purportedly showing pictures of a “Hotel Viren Sofitel”. As of the date of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantsThe Complainants assert that the disputed domain name is confusingly similar to the Complainants’ Mark because the disputed domain name incorporates the entire Mark and only adds the prefix “hotelviren”. The Complainants further assert that the Respondent has no legitimate rights or interests in the disputed domain name or the Mark and that prior to the registration of the disputed domain name, the Respondent did not conduct any bona fide business under the Mark or disputed domain name and was not known by the Mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and used to lure and attract unsuspecting Internet users to the Respondent’s website.
B. RespondentThe Respondent offers numerous defenses. The Respondent asserts that the Complainants were required to provide Respondent with “notification” prior to instituting this proceeding. The Respondent asserts that the actual “Hotel Viren Sofitel” is located in the city of Agra, India, where there are no hotels operated by the Complainants and thus the disputed domain name is not likely to cause customer confusion. The Respondent asserts that the Respondent was unaware of the Mark when the disputed domain name was registered. The Respondent asserts that the disputed domain name is not confusingly similar to the Mark because the disputed domain name includes the terms “hotel” and “viren”. The Respondent asserts that the Center lacks jurisdiction over the Respondent because the “cause of action arise [sic] in [the city of] Agra, India”. The Respondent further asserts that the Complainants have failed to allege or demonstrate actual damages. Finally, the Respondent asserts that the proceeding is barred by the “period of limitations”. The Respondent offers of expunge the words “hotel” or “sofitel” from the disputed domain name upon expiration of the disputed domain name registration on December 28, 2019. More recently, the Respondent has advised the Center that the registration of the disputed domain name will not be renewed.
6. Discussion and FindingsThe Panel has determined to continue this proceeding notwithstanding the Respondent’s representation of abandonment. The disputed domain name is locked by the Registrar. The Panel finds that additional delay in this proceeding based upon the Respondent’s representations is not warranted.
A. Identical or Confusingly SimilarThe disputed domain name adopts the Complainants’ registered Mark in its entirety preceded only by the term “hotel” and the name “viren”. The name “viren” appears to designate the Indian hotel group “Hotels Viren”. The Respondent’s submissions show that the Respondent is associated with and acting on behalf of the Viren Hotel group.
The disputed domain name thus consists of the dictionary word “hotel” and name of the Viren Indian hotel group affixed to the Complainants’ Mark. The disputed domain name is thus confusingly similar to the Complainants’ Mark. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainants’ registered trademark. Swarovski Aktiengesellschaft v. mei xudong,
WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, DomainAdmin,
WIPO Case No. D2010-1059.
The Panel finds the disputed domain name is confusingly similar to the Complainants’ Mark. The Complainants have met their burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainants have asserted that the Respondent was not provided any license or permission to use the Mark or the disputed domain name. The burden thus shifts to the Respondent to demonstrate that the Respondent was known by or did business under the Mark or the disputed domain name prior to the registration of the disputed domain name. The Respondent has failed to make any such showing or to provide any evidence of bona fide use that would establish the Respondent’s rights or legitimate interests in the Mark. From the Respondent’s submissions, the Panel concludes that the Respondent decided to name its hotel in Agra, India, the “Hotel Viren Sofitel” and proceeded to register the disputed domain name. Such appropriation of the Mark does not establish rights or legitimate interests in the Mark or the disputed domain name.
The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainants have met their burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent asserts that the Respondent was unaware of the Mark or the Complainants’ hotels prior to registering the disputed domain name. The evidence suggests the contrary.
First, a simple Internet search would have quickly disclosed the Complainants’ Mark.
Second, the Respondent is in the hotel industry and operates numerous hotels in India. The Panel finds the Respondent’s assertion of lack of awareness of the Complainants’ internationally famous and well-known Mark to be suspect.
Third, Respondent has failed to provide any reason or documentation why the Respondent chose to incorporate the Mark into the disputed domain name. Absent any evidence from the Respondent demonstrating independent research, preparations, and analysis leading to the Respondent’s decision to incorporate the Mark into the disputed domain name, the Panel concludes that the Respondent was aware of the Mark and incorporated the Mark into the disputed domain name to attract and lure to the Respondent’s website unsuspecting Internet users who would think that the Respondent’s hotel was part of the Complainants’ Sofitel hotel group.
The Panel finds the disputed domain was registered and used in bad faith. The Complainants have met their burden of proof under paragraph 4(a)(iii) of the Policy.
7. Respondent’s Remaining DefensesThe Respondent’s defenses are plead without any supporting facts or authority. The Panel finds on the current case file that the Respondent’s defenses that the Center lacks jurisdiction, that the Complaint does not state a cause of action, that prior notice of the proceeding was required, that the proceeding was brought too late, and that damages are not alleged or proved are simply meritless.
8. DecisionFor 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
William F. Hamilton
Sole Panelist
Date: January 21, 2020