WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Jason Peterson
Case No. D2006-0356
1. The Parties
The Complainant is Accor, Evry, France, represented by Cabinet Dreyfus & Associés, Paris, France.
The Respondent is Jason Peterson, activeideas.com, Quaker Hill, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sofitel-hanoi-vietnam.com> is registered with DomainAllies.com, Inc. It was first registered on August 15, 2005.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 22, 2006, the Center transmitted by email to DomainAllies.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 10, 2006, DomainAllies.com, Inc. 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 April 11, 2006. The Respondent did not submit any response. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2006.
The Center appointed the Honorable Sir Ian Barker, QC as the sole panelist in this matter on May 10, 2006. 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 one of the world’s largest travel and tourism groups. It owns some 4,000 hotels in 90 countries. The mark SOFITEL is used in 61 countries, including 200 hotels in 53 countries. It operates a website <sofitel.com> to allow internet users a ready means of ascertaining information and making bookings.
The Complainant owns numerous trademark registrations throughout the world for the name Sofitel, including International Trademarks 406255 (April 18, 1974), 614992 (October 29, 1993) and 642172 (August 31, 1995). There are other registered trademarks incorporating the word Sofitel.
The disputed domain name redirects to a website with links to other websites, including to hotels in Vietnam and to a range of financial and travel services.
The Complainant has given the Respondent no right or licence to use the disputed domain name.
The Respondent did not reply to a “cease and desist” letter and email sent by the Complainant’s lawyers on October 20, 2005.
5. Parties’ Contentions
A. The Complainant
The disputed domain name is confusingly similar to the Complainant’s registered marks. The addition of generic or geographical words to the name does not give distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and does not come within paragraph 4(c) of the Policy.
The disputed domain name was registered and is being used by the Respondent in bad faith. It is difficult to imagine that the Respondent was unaware of the Complainant, its marks and business when he registered the disputed domain name.
The addition of the words “Hanoi” and “Vietnam” to the word Sofitel shows that the Respondent had the Complainant in mind at the date of registration.
The Respondent has the purpose of disrupting the Complainant’s business because the site is linked to other hotel websites. There is a likelihood of confusion of internet users. The Respondent is trying to profit from the Complainant’s reputation by attracting internet users for commercial gain.
B. The Respondent
The Respondent did not reply to the Complainant’s submissions.
6. Discussion & Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith.
The burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the Complainant’s trademark SOFITEL. When a domain name wholly incorporates a complainant’s mark and adds generic words, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is only heightened when the generic words added by the Respondent are descriptive of a place where a Complainant’s goods or services are marketed in relation to the trademark. (See, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002); Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001); Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001); ACCOR, Société Anonyme ả Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517 (August 12, 2002), ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625).
Legitimate Rights and Interests
The Panel finds this limb of the Policy proved. The Complainant gave the Respondent no rights in respect of the disputed domain name.
The Respondent could have attempted to show that he came within paragraph 4(c) of the Policy but has chosen to make no submissions, nor present any evidence. Further Complainant has established a prima facie case, that the Respondent lacks rights and legitimate interests in the domain name.
Bad Faith Registration
It defies belief that the Respondent had not heard of the Complainant’s mark and business when he added to the mark the names of a city and a country. This was a clear indication to internet users that a visit to the website at the disputed domain name would produce information about the Respondent’s hotel in Hanoi, Vietnam. The Panel, accordingly, infers bad faith registration.
Moreover, because the website provides links to other hotels in Vietnam, there is a clear inference that the Respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, application or endorsement of his website or of a product or service on his website (Policy paragraph 4(b)(iv)). The lack of any Response from the Respondent strengthens the case for bad faith use, as does the Respondent’s lack of reply to the “cease and desist” letter (See ACCOR v. Tigertail Partners (cit.supra)).
This is a simple case of cybersquatting. The Panel has no difficulty in finding bad faith registration and use.
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 <sofitel-hanoi-vietnam.com> be transferred to the Complainant.
Hon Sir Ian Barker QC
Dated: May 24, 2006