The Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.
The Respondent is WL Web Development / Luke Ward of Ferryden Park, Australia, self-represented.
The disputed domain names <sofitel-adelaide.com> and <sofiteladelaide.com> are registered with NameSilo, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2015. On June 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 23, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2015. The Response was filed with the Center on July 18, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on July 28, 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.
The Complainant submitted an unsolicited supplemental filing on July 29, 2015. The Respondent submitted unsolicited supplemental filings on July 29, 2015 and July 31, 2015.
The Complainants, both incorporated in France, are part of the Accor group of companies. The Complainants are collectively referred to as "the Complainant" below, unless there is a reason to refer to them separately.
The Accor group operates a number of hotel chains worldwide, one of which is Sofitel. There are 120 Sofitel hotels, comprising over 30,000 rooms in almost 40 countries including Australia.
The Complainant owns worldwide registered trade marks for SOFITEL including Australian trade mark no. 337140, filed on August 29, 1979, in class 42.
On April 21, 2015, the Complainant issued a press release announcing the opening of a new Sofitel hotel on Currie Street in Adelaide, Australia and, on the same day, an article based on the press release appeared in The Advertiser newspaper in Adelaide.
The Respondent, an Australian company providing web services for small businesses, registered the disputed domain names on April 22, 2015.
As of June 4, 2015, there was a blog page at <sofiteladelaide.com> which bore the date June 20, 2014, and was headed: "Sofitel Zachary Svoboda. HELLO I'M SOFITEL SVOBODA!". Beneath the heading was a photograph of two soldiers followed by this:
"Hello, my name is Sofitel Zachary Svoboda. I'm from the Czech Republic, but now living in Adelaide, South Australia. I'm interested in sexy ladies, bare knuckle fighting, firing big guns and drinking vodka."
On the same date, there was a blank template WordPress blogging page at <sofitel-adelaide.com> including a swastika in the header and a copyright notice in the name "Sofitel Svoboda". The page included the heading "MONTHLY ARCHIVE: JUNE 2014".
On May 21, 2015, the Complainant sent a cease and desist letter to the Respondent.
The Respondent replied by email the same day claiming that the disputed domain names were owned by one of its clients, "Mr. Sofitel Zachary Svoboda". The Respondent stated that its client legally resided in Adelaide, Australia and that the client's "personal blogging websites" consisting of the client's name and location had nothing to do with luxury hotels but were entirely related to the client's personal life and achievements. The Respondent added that, if the Complainant wanted to discuss purchasing these "personal websites" from Mr. Svoboda, then the Respondent would pass on the Complainant's reasonable offer.
A summary of the Complainant's contentions is as follows:
The disputed domain names reproduce the Complainant's well-known trade mark in its entirety, which is sufficient to establish confusing similarity. The geographical term "Adelaide" does not dispel any likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain names. It is not affiliated with the Complainant, nor has it been authorised by the Complainant to use and register its trade marks.
The disputed domain names are identical to the Complainant's famous mark and the Respondent cannot reasonably claim to have intended to use the disputed domain names for legitimate activity. There is no evidence in support of the Respondent's claim to have registered the disputed domain names for a client and most likely the client does not actually exist. The WhoIs database has not been updated to reflect the so-called real registrant following the Complainant's cease-and-desist letter.
The Respondent is not commonly known by the name "Sofitel".
The blog sites at the disputed domain names do not constitute a bona fide offering of goods or services.
The disputed domain names were registered in bad faith. It is inconceivable that the Respondent was unaware of the Complainant and its famous trade marks when it registered the disputed domain names. The fact that the Respondent, which is located in Adelaide, registered the disputed domain names on the day after publicity for the proposed new Sofitel hotel appeared in an Adelaide newspaper further demonstrates the Respondent's knowledge of the Complainant.
The disputed domain names have been used in bad faith.
There is no conceivable legitimate use of the disputed domain names.
Many Internet users seeking the Complainant's website will have ended up at the Respondent's websites given the confusing similarity between the disputed domain names and the Complainant's trade marks.
It is difficult to believe that there is a genuine person called ""Sofitel Svoboda". Instead there is a strong possibility that the Respondent intends to make improper use of the Complainant's marks The Respondent's choice of the disputed domain names was deliberate, with intent to obtain some kind of profit from the reputation and goodwill of Complainant's trade mark.
The June 2014 creation date shown on the Respondent's websites pre-dates the registration of the disputed domain names. It is likely that the blogs previously existed under another domain name and were later re-used to justify the disputed domain names or else the dates were modified to show an earlier date.
It is likely that the Respondent registered the disputed domain names to prevent the Complainant from using its trade marks in the disputed domain names. This of itself is evidence of bad faith.
The Respondent's invitation to the Complainant to make a reasonable offer for the disputed domain names, together with the likelihood that the so-called client does not exist, demonstrate that the disputed domain names were registered to sell to the Complainant for valuable consideration.
A summary of the Respondent's contentions is as follows:
On April 22, 2015, Mr. Sofitel Zachary Svoboda, not having the knowledge or understanding to register domain names himself, asked the Respondent to register the disputed domain names on his behalf. Thereafter, the Respondent arranged hosting on its server, installed two WordPress blogs and Mr. Svoboda provided some basic content that he wished to be displayed on the websites. The information concerned Mr. Svoboda's personal achievements, unrelated to hotels.
Mr. Svoboda has authorised the Respondent to represent him and to respond to the Complaint on his behalf.
The Complainant has claimed that no proof of identity was provided along with the Respondent's explanation but no proof of identity was ever requested by the Complainant.
The disputed domain names have no connection with, or similarity to, a trade mark or service mark in which the Complainant has rights. The Complainant's trade mark is SOFITEL, not "Sofitel Adelaide". The Complainant does not own or operate a Sofitel hotel in Adelaide, Australia. The announcement of a plan to build a hotel in that location does not validate its existence.
The trade mark SOFITEL, which by the Complainant's own admission is "particularly related to hotels and restaurant services" has no similarities to Mr. Svoboda's blogs, featuring his personal achievements and geographical location.
A search of the Australian business database (ASIC) shows the business name "Sofitel" is registered in Adelaide, Australia but there is no registration for the business name "Sofitel Adelaide".
All Sofitel hotels use subdomain variations of both <sofitel.com> and <accorhotels.com> for their websites. Some also use individual listings outside of the parent domains but with no clear pattern for these domain names, with varied extensions being utilized. Three of the four Sofitel hotels in Australia use a ".com.au" domain name as their primary trading website and none of these use the "SOFITEL+location+.com" formulation. The Complainant has failed to register the domain names <sofitelhoteladelaide.com> and <sofitel-adelaide.com.au> both of which are currently available and more closely match the Complainant's service than the disputed domain names. Customer confusion is highly unlikely as the disputed domain names are dissimilar to the established pattern of domain names used by the Complainant for its Sofitel hotels.
The Respondent has rights or legitimate interests in respect of the disputed domain names as they were registered on behalf of the Respondent's client and they reflect his own legal name and geographical location.
The WhoIs database has not been updated to reflect Mr. Svoboda's name because the Respondent registered the disputed domain names on his behalf and the websites are hosted on the Respondent's server. A signed legal contract exists between the two parties.
Mr. Sofitel Svoboda is in fact commonly known by the name "Sofitel", as that is his true legal name.
Under the registration agreement for ".com" domain names, they may be used for commercial or personal websites. Mr. Svoboda is not required to show a bona fide offering of services for the disputed domain names as they are being utilized as personal blog sites.
The disputed domain names were not registered in bad faith, nor are they being used in bad faith.
Mr. Sofitel Svoboda registered the disputed domain names because they are the same as his own legal name and Adelaide is his geographical location, and so neither Mr. Svoboda nor the Respondent have attempted to reproduce the Complainant's trade mark in any way.
The blogs are related to Mr. Svoboda's personal achievements and have nothing to do with hotels. Mr. Svoboda has made no attempt to compete with Sofitel hotels.
As regards the timing of the registration of the disputed domain names, Mr. Svoboda had intended to register <sofitel.com>, which is identical to his own name but, as that domain name was unavailable, he searched and found other alternatives. The Complainant cannot claim every domain name that is registered, using what it considers to be a trade mark infringement, when persons exist with the same name as its trade mark.
Neither the Respondent nor Mr. Sofitel Svoboda have any prior history of involvement in domain name or trade mark disputes and so a pattern of bad faith registrations cannot be established.
Considering that the "Sofitel Hotel Adelaide" does not actually exist, it is extremely unlikely that any Internet users are even searching for that term. And when that term is entered into any Internet search engine, the disputed domain names do not appear within the first fifty search results. Moreover, Internet users ending up on the Respondent's blogs could not be confused because Sofitel Hotel Adelaide does not actually exist and the blogs have nothing to do with hotels.
The Complainant's claim that the Respondent registered the disputed domain names to sell to the Complainant is false because it was the Complainant that first contacted the Respondent, attempting to obtain ownership of the above mentioned domains.
The principles governing the question of whether a complaint may be brought by multiple complainants or against multiple respondents are set out in paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel is satisfied that the Complainants, which are part of a group of companies, have a common grievance against the Respondent and have a common legal interest in relevant rights that are allegedly affected by the Respondent's conduct and that it would be equitable and procedurally efficient to permit the proceedings to continue in the name of the multiple Complainants specified.
Both Parties have made unsolicited supplemental filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties".
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
Here, the Complainant has submitted its filing entitled "Additional Response" on the basis of an automatic right of reply to the Response and without attempting to demonstrate exceptional circumstance justifying admission of the filing. Accordingly, the Panel declines to admit the Complainant's supplemental filing as well as the Respondent's supplemental filings, which responds to the Complainant's filing. The Panel would add that, even had they been admitted, the supplemental filings would have made no difference to the outcome of this case.
The Complainant has rights in the mark SOFITEL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trade mark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain names and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the geographical term "Adelaide" is insufficient to avert a finding of confusing similarity.
The Respondent points out that the Complainant's trade mark is for SOFITEL, not "Sofitel Adelaide". However, as explained above, it is sufficient for the Complainant to show that it has rights in a trade mark which is confusingly similar to the disputed domain names and indeed it has done so because the disputed domain names consist of the Complainant's distinctive trade mark plus a descriptive term. The Complainant does not have to show that its trade mark is identical to the disputed domain names. Nor is it relevant that the Complainant is not currently operating a hotel with a name equating exactly to the disputed domain names.
The Respondent also observes that customer confusion is unlikely because the format of the disputed domain names differs from the domain names used for the Complainant's other hotels. The Panel is unconvinced by this proposition but, in any case, it does not assist the Respondent because, when assessing confusing similarity, the Panel is purely concerned with a direct comparison between the trade mark and domain names. See paragraph 1.2 of WIPO Overview 2.0. Likewise, the fact that the blogs at the disputed domain names are unrelated to the hotel business is irrelevant to consideration of the similarity between the Complainant's trade mark and the disputed domain names.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. The Respondent claims that he registered the disputed domain names on behalf of a client, "Mr. Sofitel Zachary Svoboda", allegedly located in Adelaide, for the purposes of personal blogs recounting Mr. Svoboda's "personal achievements". Such facts, if true, might have constituted rights or legitimate interests under paragraph 4(c)(ii) (commonly known by the domain name) and/or paragraph 4(c)(iii) (legitimate noncommercial or fair use) of the Policy but the Respondent has produced no evidence supporting its claims and so, in the Panel's view, it has failed to discharge the burden of production. Indeed, for reasons explained below, the Panel considers that the Respondent's version of events is not credible.
The Panel concludes that, the Complainant having made an unrebutted prima facie case, the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
The key issue is the plausibility of the Respondent's claims outlined above. The Panel considers that they are implausible for the following reasons:
1. "Sofitel" is an inherently unlikely personal name and "Sofitel Adelaide" is an equally unlikely name to choose for a blogging website even if the blogger is indeed called "Sofitel" and does indeed reside in Adelaide.
2. In any case, the Respondent's account could easily have been verified by means of a copy passport or other identity document evidencing the existence of "Mr. Sofitel Zachary Svoboda" or a copy of the "signed legal contract" between the Respondent and its alleged client, which the Respondent alluded to in the Response. The Complaint specifically pointed to the lack of evidence supporting the Respondent's pre-action claim to have registered the disputed domain names for a client and so the Respondent was left in no doubt about the importance of producing such a document. Yet, in the Response, the Respondent simply points out that the Complainant did not request proof of identity and the Respondent does not attempt to rectify the position by exhibiting the relevant documentation.
3. The disputed domain names were registered the day after the Complainant announced the proposed new Sofitel hotel in Adelaide. The Respondent has provided no adequate explanation for this.
4. Both blogs appear to have been backdated as the dates shown on the blog pages pre-date the registration date of the disputed domain names. The Complainant raised this issue in the Complaint but the Respondent failed to address it.
Taking all of the above matters into account, the Panel considers that, on the balance of probabilities, the disputed domain names were not registered on behalf of a client and that, instead, the blog sites were set up as part of a cover story to attempt justify registration of the disputed domain names; whereas the real purpose was to target the Complainant in some illicit manner, most likely to sell the disputed domain names to the Complainant for a substantial sum. In the Panel's view the foregoing constitutes registration and use in bad faith.
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 <sofitel-adelaide.com> and <sofiteladelaide.com> be transferred to the Second Complainant, SoLuxury HMC.
Adam Taylor
Sole Panelist
Date: August 11, 2015