WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Media Insights
Case No. D2004-0043
1. The Parties
The Complainant is ACCOR, of Evry, France, represented by Cabinet Ores, France.
The Respondent is Media Insights, of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sofitelcancun.com> is 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 January 20, 2004. On January 21, 2004, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On January 22, 2003, Melbourne IT Ltd 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, billing, 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 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2004.
The Center appointed Pierre Olivier Kobel as the Sole Panelist in this matter on February 20, 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 active in hotel and restaurant business worldwide. It owns and operate hotel chains under the names Sofitel, Mercure, Novotel, Ibis, Formule 1, Red Roof Ins and Motel 6.
The Complainant registered and owns the following trademarks:
- "SOFITEL," International trademark n°406255, filed on April 18, 1974, and covering goods and services in classes 01 to 42.
- "SOFITEL," International trademark n°779873 (semi-figurative), filed on February 5, 2002, and covering goods and services in classes 16, 35, 42, 43.
- "SOFITEL," US Federal trademark n°0995968, filed on October 15, 1974, and covering goods and services in class 42;
- "SOFITEL," US Federal trademark n°78107333 (semi-figurative), filed on February 7, 2002, and covering goods and services in class 35 and 43;
- "SOFITEL," French trademark n°97675756, filed on April 29, 1997, and covering goods and services in class 38;
- "SOFITEL," French trademark n°1226253 (semi-figurative), filed on February 3, 1983, and covering goods and services in class 43;
- "S SOFITEL Accor Hotels and Resorts" (semi-figurative), French trademark n°3116639, filed on August 13, 2001, and covering goods and services in classes 16, 35 and 42;
- "SOFITEL," French trademark n°1240534, filed on May 27, 1983, and covering goods and services in class 16, 28, 35 and 42.
The Complainant also owns a number of domain names incorporating its trademark; "SOFITEL," including:
- <sofitel.com>, registered in April 11, 1997;
- <hotel-sofitel.com>, registered in September 17, 2002;
- <sofitel-paris.com>, registered in May 21, 2002;
- <sofiteltokyo.com>, registered in September 25, 2002;
- <sofitelchicago.com>, registered in April 8, 2002.
The disputed domain name was registered by the Respondent on October 26, 2003.
5. Parties’ Contentions
The Complainant contends that it sent a cease and desist notice by regular mail and e-mail to the Respondent on December 5, 2003. Although the letter was returned to the Complainant with a notice "Attempted not known," the Respondent apparently replied by e-mail on December 6, 2003, confirming that "yes we will transfer domain and edit dns please forward info. Jesus" (sic). Although the Complainant sent all necessary information, the Respondent did not take the necessary steps to transfer the disputed domain name.
The Complainant contends that the Respondent simply added the generic term "Cancun" to the trademark of the Complainant, which is insufficient to avoid a risk of confusion.
The Complainant denies that it has any link or affiliation of any kind with the Respondent. It never authorized the Respondent to use its trademark or to seek the registration of a domain name incorporating its trademark. The Complainant contends that the Respondent is not known under the name "SOFITEL" or any similar term. Furthermore, the Complainant submits that it had registered numerous "SOFITEL" domain names several years before the Respondent registered the disputed domain name. The Complainant therefore concludes that the Respondent does not have any legitimate interest in the disputed domain name.
The Complainant alleges that the non-delivery of its cease and desist letter with a notice "Attempted not known" is evidence of registration in bad faith (Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainant claims that "it seems obvious the Respondent know or must have known the Sofitel’s hotel chain at the time he registered the domain name." According to the Complainant, the combination of the Complainant trademark and the geographical designation "Cancun" is evidence of the Respondent knowledge of the Complainant.
The Complainant also claims that the registration of the disputed domain name matching the precise location where the Complainant intends to open a SOFITEL Hotel, is "an opportunistic attempt to either prevent Accor from promoting its new hotel on the Internet, or for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, very probably for a sum exceeding the out-of-pocket costs directly related to the domain name." According to the Complainant, "the Respondent anticipated this opening and the need of the Complainant to promote this new location, and registered it in order to unduly hire profit from it."
Referring to National Association of Stock Car Auto Racing, Inc. v. RMG Inc., WIPO Case No. D2001-1387, the Complainant claims that registering a domain name corresponding to a famous trademark the Respondent could not ignore is another evidence of bad faith, because the Respondent is trying to thread on the Complainant’s trademark fame. The Complainant also alleges that the disputed domain name disrupts the Complainant’s business as potential customers will not reach any official Sofitel Hotel site.
The Respondent did not respond within the time limit set forth by paragraph 5 of the Policy and is therefore in default.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith. When the Respondent fails to respond, the Panel shall draw such inferences therefrom as it considers appropriate (paragraph 14 (b) of the Policy).
A. Identical or Confusingly Similar
It is a widely recognized principle in trademark law that the mere adjunction of a descriptive term to a famous trademark does not suffice to avoid a risk of confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark of the Complainant in the meaning of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant denies having any link or legal relationship with the Respondent of such a nature to authorize the latter to use the Complainant’s trademark "SOFITEL" to register domain names.
Since the Respondent who is apparently not known as "SOFITEL" or any similar name did not reply to the contentions of the Complainant and did not allege any legitimate interest, the Panel is satisfied that the Complainant has proven the absence of legitimate interest in the meaning of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The evidence presented by the Complainant does not support the Complainant’s contention that the Respondent had registered the disputed domain name primarily for the purpose of transferring the domain name for consideration in excess of its out-of-pocket expenses directly related to the domain name in the meaning of Paragraph 4(b)(i) of the Policy. It is not demonstrated either that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant in the meaning of Paragraph 4(b)(iii) of the Policy.
However, the file contains evidence that the Respondent has set up and uses a website advertising various hotel chains in Cancun and offering packages for trips to Cancun. From that evidence, the Panel can fairly infer that the Respondent is active in hotel and restaurant business like the Complainant and that it was aware of the Complainant’s well known trademark "SOFITEL."
The evidence contained in the file also reveals that the Respondent’s website advertises numerous hotels and resorts except "SOFITEL." The main reason is that SOFITEL is currently not present in Cancun, a fact that the Respondent who is active in hotel and restaurant business in relation to Cancun could not ignore.
In the eyes of the Panel, the evidence presented clearly indicates that the Respondent registered and used the disputed domain name to attract, for commercial gain, Internet users interested to travel to Cancun to its own website, by creating a confusion with the Complainant’s well known trademark. As specified by Paragraph 4(b)(iv) of the Policy this is evidence of registration and use in bad faith.
Therefore, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent, in the meaning of Paragraph 4(a)(iii) of the Policy.
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 name, <sofitelcancun.com> be transferred to the Complainant.
Pierre Olivier Kobel
Dated: March 1, 2004