WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. For Sale
Case No. D2003-1011
1. The Parties
The Complainant is ACCOR of Evry, France, represented by Cabinet Ores of Paris, France.
The Respondent is For Sale of Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <sofitelplaza.com> and <sofitelplaza.net> are registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2003. On December 22, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On December 23, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 January 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 11, 2004.
The Center appointed François Dessemontet as the sole panelist in this matter on March 9, 2004. The file was received by the Panel on March 11, 2004. 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 Complainant is a company operating hotels and restaurants throughout the world, under names and trademarks such as SOFITEL, MERCURE, NOVOTEL, IBIS, FORMULE 1, RED ROOF INNS and MOTELS 6.
The Complainant is owner of numerous trademark rights on the name SOFITEL throughout the world, among which the following ones will be mentioned:
- SOFITEL, International trademark nį 406255, filed on April 18, 1974, on the basis of a French registration of May 30, 1973, for classes 1- 42 and protected in Vietnam;
- SOFITEL, International trademark nį 779873, filed on February 5, 2002, on the basis of a French registration of August 13, 2001, for classes 16, 35, 42, 43 and protected in Vietnam;
- SOFITEL, US Federal trademark nį 0995968, filed on October 15, 1974, for class 42;
- SOFITEL, US Federal trademark nį 78107333, filed on February 7, 2002, for classes 35 and 43;
- SOFITEL, French trademark nį 1226253, filed on February 3, 1983, for class 43;
- SOFITEL French trademark nį 1240534, filed on May 27, 1983, for classes 16, 28, 35 and 42.
The Complainant also owns numerous domain names, among which the following ones will be mentioned:
The Complainant sent a warning letter, dated September 5, 2003, by registered mail and by e-mail, to the Respondent asking for the transfer of the disputed domain names. The letter, sent by registered mail, was returned to the Complainant with the mention "address unknown." However, on September 6, 2003, the Respondent sent the following reply to the e-mail version of the warning letter: "Thanks for email to me. But now this domains has been cannel so I canít control it. Iím very sorry for that" [original spelling].
5. Partiesí Contentions
In its Complaint, the Complainant alleges that the two disputed domain names are
confusingly similar to its SOFITEL trademark, as the disputed domain names reproduce it in its entirety and as the word "plaza" is a generic word that only heightens the risk of confusion.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names, since the Respondent, which has no authorization to use or register the Complainantís trademark, is not affiliated in any way with the Complainant. Further, the Respondent is not known under the name "Sofitel." Finally, the Respondent is not making any non-commercial or fair use of the disputed domain names, as there are no active websites linked to the disputed domain names.
The Complainant also alleges that the Respondent registered and used the disputed domain names in bad faith, as the Respondent must have known the SOFITEL hotel chain at the time he registered the disputed domain names and that he was infringing the Complainantís rights. In addition, the Respondent must have registered those domain names primarily for the purpose of selling them for a price probably exceeding the out-of-pocket costs and is passively holding them. Finally, the Respondent did not disclose true and correct information concerning its identity and contact details.
In its Complaint, the Complainant requests the Panel to issue a decision ordering that the domain names <sofitelplaza.com> and <sofitelplaza.net> be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant alleges that the disputed domain names are identical or confusingly similar to its trademarks.
The disputed domain names <sofitelplaza.com> and <sofitelpaza.net> reproduce the Complainantís trademark in its entirety. "Plaza" is a generic word associated with hotels, which is not sufficient to avoid a confusing similarity between the disputed domain names and the Complainantís trademarks. Indeed, it is a common word with no particular distinctiveness. On the contrary, the addition of a generic word such as "hotel" or "plaza" can only add to the confusion, as such a word is descriptive of the Complainantís goods and services (See <hotelsofitel.net>, ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, with citations of further WIPO cases). Finally, the mark, as used in Vietnam, appears as "Sofitel Plaza". Indeed, the Complainant operates two SOFITEL PLAZAhotels, one in Hanoi and one in Ho Chi Min City (Saigon).
The Panels finds that the disputed domain names are confusingly similar to the Complainantís mark and identical to the mark as used in Vietnam.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain names.
The Respondent is not known under the name "Sofitel" or "sofitelplaza" and has no prior rights or legitimate interests in the disputed domain names. Further, the Respondent is not making a legitimate or non-commercial or fair use of the disputed domain names.
The Respondent defaulted and did not dispute the Complainantís allegations nor provide information as to its interests in or use of the disputed domain names. In addition, the disputed domain names are not linked to any active website. Therefore, there is no evidence that the Respondent has any rights or legitimate interests in respect of the disputed domain names.
C. Domain Names Registered and Used in Bad Faith
The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.
The Respondent could not ignore that the registration of the disputed domain names was an infringement of the Complainantís rights over the SOFITEL trademarks and trade name. "Sofitel" is an international hotel chain, the name of which is also protected in Vietnam by two international trademark registrations. Further, the Complainant operates four SOFITEL hotels in Vietnam, among which are two SOFITEL PLAZA hotels, one in Ho Chi Min City (Saigon) and one in Hanoi, where the Respondent is deemed to reside.
The Respondent also provided or failed to correct false contact details. Indeed, the registered letter sent to the Respondent was returned to the Complainant with the mention "address unknown." A good faith registration and use of a domain name requires the full disclosure of all required information, such as a true and correct name and contact details. Providing or failing to correct false information and concealing oneís true identity can be deemed as evidence of bad faith (see <telstra.org>, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Further, the Respondentís name, "For Sale," and the first part of itís contact address, "Only 20&/domain/2years," clearly indicate the purpose for which the disputed domain names were registered, namely to sell them at a price most probably exceeding the related out-of-pocket costs.
Finally, the Panel notes that, on September 6, 2003, in its e-mail response to the Complainantís warning letter, the Respondent apparently expressed the intent to cancel the disputed domain names. However, more than three months later the disputed domain names were still registered under the Respondentís name. The Respondentís behavior, by which it sought to mislead the Complainant, shows bad faith.
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <sofitelplaza.com> and
<sofitelplaza.net> be transferred to the Complainant.
Dated: March 22, 2004