The Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Huxianfeng of Beijing, China.
The disputed domain name <sofitelluxuryhotels.com> is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2014, 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 August 11, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on August 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 15, 2014. 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.
The Complainants are Accor and its subsidiary SoLuxury HMC (the “Complainant”), one of the world’s leading provider of hotel services. The Complainant has been active for over 45 years and operates more than 3,400 hotels in 92 countries worldwide. The group includes hotel chains such as Pullman, Novotel, Mercure and Ibis.
The Sofitel brand is the luxury trademark of the Complainant, established worldwide. The Complainant operates 18 Sofitel hotels in China where the Respondent is located.
The Complainant is the owner of multiple trademark registrations for the mark SOFITEL around the world. For example: SOFITEL, International Trademark No. 939096 dated August 30, 2007 protected in China and covering services in classes 35, 36, 43 and 44.
Through extensive and prolonged use and advertising around the world, the SOFITEL trademark has generated vast good will.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the name “Sofitel”. For example: <sofitel.com> and <sofitel.org>.
The disputed domain name was registered on January 5, 2014.
The disputed domain name resolves into a parking page in Chinese and in English indicating that the disputed domain name is for sale.
The Complainant sent the Respondent a cease and desist letter, to which no Response was received.
The Complainant argues that the disputed domain name is confusingly similar to the SOFITEL trademark, in which the Complainant has rights, seeing that it incorporates the SOFITEL trademark as a whole, with the additional descriptive words “luxury” and “hotels”.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it had not licensed or otherwise permitted the Respondent to use its SOFITEL trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the name SOFITEL.
The Complainant further argues that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark and disrupting the Complainant’s business.
The Complainant argues that it sent the Respondent a cease and desist letter in an attempt to resolve the dispute outside the administrative proceeding, to which the Respondent did not respond, which further supports the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“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 Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
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.” (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:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name consists of English words;
c) The Respondent did not object to the Complainant’s request that English be the language of the proceeding;
d) Some of the content of the website at the dispute domain name is in English.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is 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. The Complainant is the owner of multiple trademark registrations for the mark SOFITEL around the world. For example: SOFITEL, International Trademark No. 939096 dated August 30, 2007 protected in China and covering services in classes 35, 36, 43 and 44.
The disputed domain name differs from the registered SOFITEL trademark by the additional descriptive words “luxury” and “hotels”.
The disputed domain name integrates the Complainant’s trademark SOFITEL in its entirety, as a dominant element, with additional descriptive words “luxury” and “hotels” which do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s well-known SOFITEL trademark and refer to the Complainant’s luxury hotel services offered under the mark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
Also, the addition of a generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
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 (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its SOFITEL trademark or a variation of it. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SOFITEL trademark since the year 2007. For this Panel, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval in the context of a commercial website that is using the disputed domain name to sell third party products, as contrasted with a noncommercial website that makes only fair uses: “The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Indeed, in the context of commercial websites that cannot claim fair use, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name includes the descriptive words “luxury” and “hotels" which refer directly to the Complainant’s business under the SOFITEL mark. This is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its SOFITEL trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Furthermore, the disputed domain name is confusingly similar to the Complainant’s famous trademark. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites that “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 Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic to a commercial website 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 Policy.
The disputed domain name resolves to a webpage indicating that the disputed domain name is for sale. This is evidence in accordance with paragraph 4(b)(i) of registration and use in bad faith.
The Respondent’s lack of response to the cease and desist letter sent by the Complainant, is a further indication of the Respondent’s bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, and failure to answer the cease and desist letter, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <sofitelluxuryhotels.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: September 25, 2014