WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Whois Privacy Protection Service, Inc. / Kit and Kaboodle

Case No. D2015-0120

1. The Parties

The Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is Whois Privacy Protection Service, Inc. / Kit and Kaboodle, of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <sofitelmelbourne.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 27, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 2, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2015.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on March 3, 2015. 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

Complainants are Accor and its subsidiary SoLuxury HMC. Accor has been providing services in the hotel industry for over 45 years. It operates more than 4,200 hotels in 92 countries worldwide. The Accor group includes hotel chains such as Pullman, Novotel, Mercure and Ibis.

The SOFITEL brand is the luxury trademark of Accor’s subsidiary SoLuxury HMC, established in 40 countries in Europe, Africa, the Middle East, the Asia Pacific region and in North and South America. In particular, Accor operates the “Hotel Melbourne on Collins” located in Melbourne, Australia.

Complainants own in particular the following International and national trademark registrations among others:

- SOFITEL, International Trademark No. 642172 registered on August 31, 1995 covering services in classes 35, 36, 43 and 44;

-SOFITEL United States of America Trademark registered on October 15, 1974 with the registration number 0995968 covering the class 42.

Complainants operate domain names reflecting its trademark, including <sofitel.com>, which was registered on April 11, 1997 and <sofitel.us>, registered on April 19, 2002.

A WhoIs database search revealed that the disputed domain name <sofitelmelbourne.com> was registered by Respondent on June 14, 2000. The disputed domain name is redirected to “www.sex.com” which is a pornographic website.

5. Parties’ Contentions

A. Complainants

The Complainants claim that the disputed domain name is identical or confusingly similar to the registered trademark SOFITEL. The addition of the word “Melbourne” does not detract from any similarity all the more so because the Complainants do have a hotel named “Sofitel Melbourne”.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. It has not been authorized or licensed by the Complainants to use the SOFITEL trademark.

The Complainants contend that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants claim that the Respondent must have known the Complainants’ trademark when registering the disputed domain name and that the Respondent is using the disputed domain name for redirecting it to a pornographic site.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar for the purpose of the Policy (see Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755) to the Complainants’ trademark SOFITEL.

The disputed domain name <sofitelmelbourne.com> wholly incorporates the Complainants’ distinctive trademark and the term “Melbourne” which is purely descriptive and only refers to a designation of the geographical location.

Moreover, considering the sector within which the Complainants operate, the geographical designation may even enhance the false impression that any services offered under the disputed domain name are officially linked to the Accor group.

The fact that Complainants’ SOFITEL mark is a well-known trademark and that the Complainants have a hotel in Melbourne, which is known as “Sofitel Melbourne on Collis” further increases the risk of confusion.

For the reasons mentioned above, the Panel finds that the disputed domain name <sofitelmelbourne.com > is confusingly similar to the Complainants’ SOFITEL trademark.

The Complainants have thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The onus is upon the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut the case.

The Panel accepts the Complainants’ submissions that the Respondent does not appear to have been known by the disputed domain name, and has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As a matter of fact, by redirecting the disputed domain name to a pornographic website the Respondent is making a commercial use of the disputed domain name and is taking advantage of the Complainants’ trademark and reputation.

The Respondent has not filed a response. It has no consent from the Complainants, has not used the disputed domain name for a bona fide offering of goods and services given the confusing use, as discussed below, and is not commonly known by the disputed domain name. Nor is it making noncommercial or fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.

In the Panel's view the Complainants have made out their prima facie case under this element of the Policy and the Respondent has failed to file a response. Accordingly the Complainants succeed in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the opinion that using a domain name that is confusingly similar to a well-known trademark for pornographic services is evidence of use of the disputed domain name in bad faith. It is clear that such use may harm the reputation of the trademark and that the Respondent is using the Complainants’ mark to attract Internet users to third party websites for commercial gain.

However, according to the Policy it is necessary to show not only that the disputed domain name is being used in bad faith, but that it was also registered in bad faith.

The Complainants assert that the registrant of the disputed domain name has changed in 2008, which is not contested by the Respondent. It is undoubted that in 2008 (time of the registration of the disputed domain name) the Complainants’ trademark SOFITEL had already been a well-known trademark for a long time. As the Complainants submit, it is inconceivable that the Respondent would not have known of the Complainants’ mark.

The fact that the disputed domain name comprises the Complainants’ very well-known and distinctive mark with the addition of a geographical location corroborates the Panel’s finding that the disputed domain name was obviously registered by the Respondent with the Complainants in mind.

Further, it is unequivocally clear (due to the absence of any submission from the Respondent to the contrary, the use of privacy shield and the fact that the website is redirected to “www.sex.com”) that this registration was made without the consent of the Complainants.

It is not plausible that the disputed domain name was legitimately registered without the intention in some way or another to take unfair advantage of the similarity between the disputed domain name and the Complainants’ trademark.

All of the above facts (the Respondent’s default, the use of a privacy shield, the disputed domain name is directed to a pornographic site) are sufficient for a finding of bad faith registration.

Anyway, the Panel is of the opinion that the mere fact that the disputed domain name - which reproduces Complaints’ trademark - is redirected to “www.sex.com” is contrary to the requirement of paragraph 2 of the UDRP, which states: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."

In other words, the Respondent, by redirecting the disputed domain name to “www.sex.com”, is breaching the warranty to not to use the disputed domain name in violation of someone else’s rights.

Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Complainants have established the requirements of 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 name <sofitelmelbourne.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: March 20, 2015