WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Jose Manuel Fernandez Garcia
Case No. D2002-0988
1. The Parties
The Complainant is ACCOR, Société Anonyme à Directoire et Conseil de surveillance, Evry, France, represented by Ms. Nathalie Dreyfus of Cabinet Wagret, Paris, France ("Complainant").
The Respondent is Mr. Jose Manuel Fernandez Garcia, an individual domiciled at Ourense 32003, Spain ("Respondent").
2. The Domain Names and Registrar
The dispute concerns the domain names <sofitel-demeure.com>, <sofiteldemeure.com>, <sofiteldemeurehotel.com>, <sofiteldemeurehotels.com> ("the Domain Names").
The Registrar is CORE Internet Council of Registrars, Geneva, Switzerland ("the Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in electronic form on October 23, 2002, and in hard copy on October 28, 2002.
The Center verified that the Complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On October 24, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. October 29, 2002, the Registrar transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that CORE is the Registrar of the Domain Name, the Registrant is Jose Manuel Fernandez Garcia, and the language of the Service Agreement is English.
After being noticed by the Center on October 29, 2002, that the Complaint referred to the Registrar as Nominalia (CORE-1), Spain, instead of CORE, Switzerland, the Complainant amended the Complaint accordingly and this amendment was received by the Center on November 7, 2002.
On November 8, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by November 28, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, and (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on December 4, 2002.
On December 9, 2002, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on December 12, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was December 27, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of over 70 registered trademarks throughout the world (a list of these registrations is provided as Annex 3 of the Complaint), incorporating the word SOFITEL, or figurative trademarks used in connection with the verbal trademarks. Among these registrations are the French national registration No 1226253 SOFITEL, registered February 3, 1983, for hotel and restaurant services in Class 42, French national registration No 1240534 SOFITEL, registered May 27, 1983, in Classes 1 Ė 42, and French national registration No 97675756 SOFITEL, registered April 29, 1997, in respect of services in Class 38 (Annexes 4 Ė 6).
The Complainant states that SOFITEL is one of the best known trademarks in respect of hotels and restaurant, and that SOFITEL is the premium brand of ACCOR (Annex 10). The SOFITEL trademarks are regularly promoted through advertising, and SOFITEL is ranked as the "third international leader" with 150 hotels in 50 countries (Annex 11).
The Respondent registered the Domain Names on March 15, 2000, (Annex 1 of the Complaint), however no specific information is provided about the Respondentís business activities.
5. Partiesí Contentions
The Complainant discovered the registration of the Domain Names in December 2001. A check revealed that none of the Domain Names were connected to active websites.
On January 11, 2002, the Complainantís representative sent a letter to the Respondent, informing of the Complainantís trademark rights and demanding the Respondent to transfer the Domain names to the Complainant (a copy of the letter is provided as Annex 12 of the Complaint). As no reply was received, a reminder was sent to the Respondent on January 23, 2002, still with no reply from the Respondent.
The Complainant states that the relevant part of the Domain Names is confusingly similar to the Complainantís marks as all four of them include the mark SOFITEL.
According to the Complainant, the addition "demeure" means "residence" in French and the word "hotel" refers to services of accommodation. These generic additions refers to the services offered by the Complainant. Given the principal place of business of the Complainant, located in France, the likelihood of confusion is substantial, in particular for the French consumers. With regard to the extensive reputation throughout the world of the mark SOFITEL, consumers will obviously be led to think that the holder of the Domain Names has some kind of partnership with the Complainant.
The Complainant further states that the Respondent has no legitimate interest or rights in the Domain Names, as the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. No agreement, whether written or oral, has been made between the Complainant and the Respondent.
The Respondent registered the Domain Names on March 15, 2000, whereas the Complainantís rights to the mark SOFITEL goes back to February 3, 1983.
The Respondent is, according to the complainant, not commonly known by any of the Domain Names and is not making a legitimate non-commercial or fair use of them.
The Complainant concludes that the Domain Names were registered and is used in bad faith. The Complainant and the trademark SOFITEL is well known and used internationally, and offers information and hotel reservation services world-wide via the website "sofitel.com". The association of the term "SOFITEL" and a word describing the Complainantís business activities is likely to be chosen only by legitimate traders, and only in agreement with the Complainant.
The fact that there is no website connected to the domain Names, may lead to disruption of the Complainantís business as consumers, using the Domain Names and wanting to make room reservations via the Internet, will only receive a shift or message error. The Complainant, referring to WIPO Case No D2001-0046 (Telstra Corporation Ltd v. Ozurls), points out that the Center has already decided that "the concept of use in bad faith is not limited to positive action".
Considering the distinctive nature of the trademark SOFITEL and the reputation of the complainant, it is obvious that the Respondent had knowledge of the Complainantís marks by the time the Domain Names were registered.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Names be transferred to the Complainant.
The Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
1. Identical or Confusingly similar Trademark?
The Complainant is the owner of a number of trademark registrations for the word SOFITEL, mainly in connection with hotel services.
The relevant parts of the Domain Names are <sofitel-demeure>, <sofiteldemeure>, <sofiteldemeurehotel>, and <sofiteldemeurehotels>, which means that all disputed Domain Names consists of the Complainantís trademark and the addition of a generic term associated with the business of the Complainant.
It is the opinion of this Panel that the said generic additions only add to the similarity to the trademark SOFITEL.
Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainantís trademarks.
2. No Rights or Legitimate Interest?
The Panel has no reason to doubt Complainantís statement that the Respondent is not an authorized agent or licensee of the Complainantís services and has no other permission to apply for any domain name incorporating the trademark SOFITEL.
By not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The fact that the Domain Names, registered for more than 30 months ago, still does not point to any active website (as shown by the affidavit provided in Annex 16) also indicates that, before any notice to the Respondent of the dispute, the Respondent has not made any use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Names.
3. Registered and Used in Bad Faith?
The Respondent has registered no less than four domain names, all consisting of the well-known trademark SOFITEL and with additions of generic words connected to the business of the Complainant ("hotel", "hotels" and "demeure"). The Respondent is domiciled in Spain. To the best knowledge of the Panel, the French word "demeure" does not exist in the Spanish language and Ė at least in connection with SOFITEL Ė it is obvious that the Respondent registered the Domain names with the Complainant in mind.
According to Paragraph 4(b)(ii) of the Policy, one of the circumstances indicating bad faith is that the Respondent has registered the domain names to prevent the trademark owner from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. In this particular case, the Respondent has registered four domain names, all combined of the Complainantís trademark and a word describing the business of the Complainant. The Panel concludes that this action is a strong indication of Respondentís intention to prevent the Complainant from reflecting the mark SOFITEL in combination with "hotel", etc and that the four very similar registrations may be regarded as a "pattern of such conduct".
The nature of the Respondentís business or business connections is not known. However, the mere fact that the Respondent registered the Domain Names indicates that he has some knowledge of the hotel business or at least a good knowledge of the Complainantís business. The Complainant argues that its business can be disrupted by the existence of the Domain Names and the Panel agrees that the Domain Names may well have been registered primarily for the purpose of disrupting the business of a competitor (the Complainant).
The Domain Names does not correspond to any active website, but Ė as pointed out by the Complainant Ė also inaction can, under certain circumstances, fit in under the concept of "use in bad faith". In this case, the Domain Names incorporates a well known trademark, the Respondent has not used any of the Domain Names actively for over 30 months and he refused to reply to the Complainantís cease and desist letter.
The Panel therefore finds that Respondent registered and has used the Domain Names in bad faith.
The Panel concludes (a) that the Domain Names <sofitel-demeure.com>, <sofiteldemeure.com>, <sofiteldemeurehotel.com>, <sofiteldemeurehotels.com> are confusingly similar to the Complainantís trademark "SOFITEL", (b) that the Respondent has no rights or legitimate interest in the Domain Names, and (c) that the Respondent has registered and used the Domain Names in bad faith.
Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <sofitel-demeure.com>, <sofiteldemeure.com>, <sofiteldemeurehotel.com>, <sofiteldemeurehotels.com> be transferred to the Complainant ACCOR, Société Anonyme.
P-E H Petter Rindforth
Dated: December 20, 2002