The Complainants are Accor SA, SoLuxury HMC, France and Fairmont Hotel Management L.P., United States of America (“United States”) represented by Dreyfus & associés, France.
The Respondent is Zhao X ihua (赵细华), Zho Xihua (赵细华), Guang Zhou Shi Lv Yue Shang Wu Fu Wu You Xian Gong Si (广州市旅悦商务服务有限公司), China. 2. The Domain Names and Registrar
The disputed domain names , , are registered with Foshan YiDong Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 12, 2019 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on August 16, 2019.
On August 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed the request that English be the language of the proceeding on August 12, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2019.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 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
The Complainants Accor SA, SoLuxury HMC (both are French companies) and Fairmont Hotel Management L.P. (United States company) are involved in the hotel business. SoLuxury HMC and Fairmont Hotel Management L.P. are subsidiaries of Accor SA. Accor SA operates more than 4,800 hotels worldwide in 100 countries. The Complainants have a presence in China, owning over 300 hotels. Examples of hotel chains under the Complainants include Pullman, Novotel, Mercure, and Ibis.
The Complainants are the owners of numerous trademarks worldwide, including, but not limited to the following:
- SOFITEL (International Trademark Registration No. 863332) registered to SoLuxury HMC on August 26, 2005 and protected in, inter alia, Japan, China and Singapore;
- SOFITEL (International Trademark Registration No. 939096) registered to SoLuxury HMC on August 30, 2007 and protected in, inter alia, Japan, Republic of Korea, Singapore, China and Viet Nam;
- MERCURE (International Trademark Registration No. 403334) registered to Accor on December 14, 1973 and protected in, inter alia, Poland, Italy, Monaco and Austria;
- MERCURE (Chinese Trademark No. 10357111) registered to Accor on March 7, 2013 in China;
- GRAND MERCURE (International Trademark Registration No. 900839) registered to Accor on September 29, 2006 and protected in, inter alia, Japan, Singapore, China and Viet Nam;
- FAIRMONT (European Union Trademark No. 005430954) registered to Fairmont Hotel Management L.P. on March 13, 2015 in European Union; and
- FAIRMONT (European Union Trademark No. 001005123) registered to Fairmont Hotel Management L.P. on May 24, 2000 in European Union.
The Complainants own many domain names, including , , , and .
The disputed domain names were registered on the following dates:
- was registered on June 21, 2014;
- was registered on July 4, 2014; and
- was registered on September 22, 2014.
The disputed domain names previously resolved to websites containing information on the Complainants’ hotels. The dispute domain names all presently resolve to blank pages. 5. Parties’ Contentions A. Complainant
The Complainants’ contentions include the following:
The Complainants argue that the disputed domain names are confusingly similar to the Complainants’ trademarks and that any differences are insufficient to prevent a likelihood of confusion with the Complainants’ trademarks.
The Complainants also argue that the Respondent has no rights or legitimate interests in respect of the disputed domain names as they have not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names.
The Complainants further argue that the disputed domain names were registered and are being used in bad faith as the Respondent is using the disputed domain names with the intention to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainants’ trademarks. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 Agreements for the disputed domain names is Chinese.
The Complainants requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
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.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.)
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) That other domain names registered to the Respondent consist of Latin letters, rather than Chinese characters;
(iii) The websites that the disputed domain names previously resolved to are in Chinese with an option to view the websites in English;
(iv) The Complainants may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(iv) The Respondent did not object to the Complainants’ request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Consolidation of Multiple Registrants
Paragraphs 3(c) and 10(e) of the Rules respectively provide that:
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
It is established that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).
In the present case, the disputed domain names are all registered through the same registrar, Foshan YiDong Network Co. LTD. The name of the registrant of the disputed domain name is Zhao X ihua (赵细华) and the name of the organisation of the registrant is guang zhou shi lv yue shang wu fu wu you xian gong si (广州市旅悦商务服务有限公司). On the other hand, the name of the registrant of the disputed domain names and is Zho Xihua (赵细华) and the name of the organisation of the registrant is guang zhou shi lv yue shang wu fu wu you xian gong si (广州市旅悦商务服务有限公司). The registration dates of all the disputed domain names are different.
The Panel is of the view that there is common control being exercised over the disputed domain names and websites and it is very likely that the disputed domain names belong to the same owner or are being controlled by the same person or entity for the following reasons:
Firstly, the disputed domain names were all registered with the same registrar.
Secondly, although the latin characters of name of the registrants of the disputed domain names are slightly different (i.e. “Zhao X ihua” versus “Zho Xihua”), there is only a slight difference of a single character “a” and the spacing. Furthermore, there is an increased likelihood that the two registrants are the same individual in light of the fact that both registrants have the same name in Chinese.
Finally, the organisations of the registrants of all the disputed domain names are the same.
Accordingly, having regard to the above circumstances, the Panel is of the view that the consolidation of the multiple domain name disputes asserted by the Complainants against the Respondent is consistent with the Policy and Rules, and is in line with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes. 6.3. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. It is a well-established principle that the addition of a term to a trademark does not necessarily eliminate a likelihood of confusion (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
The disputed domain names , and all wholly incorporate at least one of the Complainants’ trademarks in their entirety.
The disputed domain name wholly incorporates the Complainants’ SOFITEL trademark with the addition of “harbin” followed by a hyphen preceding the SOFITEL trademark. “Harbin” is a geographical reference to a city in China. Where a complainant’s trademark is recognizable within the disputed domain name, the addition of geographical term would not prevent a finding of confusing similarity (See WIPO Overview 3.0, section 1.8.). The addition of the generic Top-Level Domain (“gTLD”) “.com” also does not avoid confusing similarity between the Complainants’ trademarks and the disputed domain name (see WIPO Overview 3.0, section 1.11).
The disputed domain name wholly incorporates the Complainants’ MERCURE and GRAND MERCURE trademarks, with only the addition of a hyphen to the GRAND MERCURE trademark. The insertion of a hyphen in domain names is “insufficient to distinguish the [r]espondent’s domain names from the [c]omplainant’s mark because the dominant portion of each domain name is the [c]omplainant’s [trademark]” (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768, and TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER,WIPO Case No. D2012-2001). In the Panel’s view, the likelihood of confusing similarity remains and the addition of the gTLD “.com” also does not avoid confusing similarity between the Complainants’ trademarks and the disputed domain name.
The disputed domain name wholly incorporates the Complainants’ FAIRMONT trademark with the addition of the dictionary term “hotel” followed by a hyphen preceding the FAIRMONT trademark. The addition of the dictionary term “hotel” does not avoid a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). The addition of the gTLD “.com” also does not avoid confusing similarity between the Complainants’ trademarks and the disputed domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. B. 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. (See WIPO Overview 3.0, section 2.1).
In the present case, the Complainants have demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Complainants have provided evidence that they own numerous trademark registrations in many jurisdictions long before the disputed domain names were registered and that they have not licensed or otherwise permitted the Respondent to use the Complainants’ trademarks (see LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
The Complainants have also provided evidence that the Respondent is not commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3).
In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainants’ prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see 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 Complainants have submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainants registered their trademarks. According to the evidence filed by the Complainants, the Complainants have owned registrations for their multiple trademarks since as early as the year 1973 and these registrations were active at the time the Respondent registered the disputed domain names in 2014. In view of the evidence filed by the Complainants, and the widespread use of many trademarks owned by the Complainants, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainants, were registered long before the registration of the disputed domain names. Therefore, it is unlikely that the Respondent did not know of the Complainants’ marks prior to registration of the disputed domain names (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain names are confusingly similar to the Complainants’ multiple trademarks which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainants. Previous UDRP panels ruled that in such circumstances “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.
The disputed domain name previously resolved to what appeared to be a hotel reservation website for a hotel named “Sofitel Wanda Hotel Harbin” which bore the Complainants’ SOFITEL trademark and logo at the top of the homepage. The homepage of the website also displayed a photo of the Complainants’ actual Sofitel Wanda Hotel Harbin prominently.
The disputed domain name previously resolved to what appeared to be a hotel reservation website for a hotel named “Fuzhou Meilun Hotel” which appears to be offering luxury hospitality services. Notably, the homepage of the website is of the same format as that of which also displayed a photo of the actual Fuzhou Meilun Hotel prominently.
The disputed domain name previously resolved to what appeared to be a hotel reservation website for a hotel named “Palace Garden Hotel and Resorts” which also appeared to be offering luxury hospitality services. The homepage of its website is also of the same format as the other two disputed domain names and also featured a photo of the actual Palace Garden Hotel and Resorts.
In the Panel’s view, the websites that the disputed domain names previously resolved to show that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ trademarks (see paragraph 4(b)(iv) of the Policy). Such use demonstrates intent on and ultimate execution by the Respondent’s part to specifically target Internet users who may have intended to visit the Complainants’ websites but was instead misled to the Respondent’s websites. Internet users seeking to visit the Complainants’ websites would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainants due to the similarity in services offered in the same hospitality industry. However, no such connection exists, and there is nothing on the Respondent’s websites that would clarify that the Respondent is not affiliated with or endorsed by the Complainants. Notably, the homepages of the websites at the disputed domain names all appeared in the same format that also displayed a photo of the actual hotel prominently. The Panel also finds that it is not a coincidence that all three disputed domain names resolve to blank pages at present.
Taking all of the above into consideration, the Panel finds that under the particular circumstances of this case, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ trademarks under paragraph 4(b)(iv) of the Policy.
At present, the disputed domain names resolve to blank pages. The Panel finds that such change may be further evidence of bad faith.
Based on the evidence presented to the Panel, including the registration of the disputed domain names after the registration of the Complainants’ trademarks, the confusing similarity between the disputed domain names and the Complainants’ trademarks, the Respondent’s use of the disputed domain names and the failure of the Respondent to submit a response, the Panel concludes that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) 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 names be transferred to their respective Complainants:
be transferred to SoLuxury HMC;
be transferred to Accor SA; and
be transferred to Accor SA.
Jonathan Agmon
Sole Panelist
Date: September 30, 2019
Full & Egal Universal Law Academy