WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR S.A. v. Gary Weber

Case No. D2007-1053

 

1. The Parties

The Complainant is ACCOR S.A., Evry Cedex, France, of France, represented by Cabinet Dreyfus & Associs, France.

The Respondent is Gary Weber, Kandagar, Afghanistan.

 

2. The Domain Names and Registrar

The disputed domain names <sofitel-hotel.biz> and <sofitel-hotel.info> are registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 20, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On July 23, 2007 EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 31, 2007. The Center verified that the Complaint together with the amendment to 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 August 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2007.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 25, 2007. 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

Accor (hereafter ‘Complainant’) is an European leader and one of the world’s largest business organizations in travel, tourism and corporate services. Complainant owns about 4,000 hotels in 90 countries worldwide. More particularly, the Complainant operates several hotels especially in Europe and in the United States of America.

The group Accor holds among others trademarks NOVOTEL, IBIS, and SOFITEL. Sofitel is present in 52 countries around the world, with more than 189 hotels. SOFITEL is the premium hotel brand of Accor. The Complainant owns and mainly communicates on the Internet via the website “www.sofitel.com” in order to allow the Internet users a quick and easy finding and booking of its hotels.

The Complainant noticed that the domain names <sofitel-hotel.info> and <sofitel-hotel.biz> were registered. A Whois Database search revealed that the domain names were registered by the Respondent.

Furthermore, both domain names direct Internet users to a pornographic website titled ‘VIDEO PORTAL’.

Before introducing this UDRP action, the Complainant sent a cease-and-desist letter to Respondent by email and also sent cease and desist letters to the Registrar and the DNS host by registered letter and e-mail on July 12, 2007, asking to amicably transfer the domain names <sofitel-hotel.biz> and <sofitel-hotel.info> based on the Complainant’s trademark rights.

All three parties who received the cease and desist letters failed to respond to the letters. Furthermore, the address provided in for the Respondent is false, as it uses the numbers 12345 for the phone contact and ‘xxxx’ for the address.

As no amicable settlement has been found due to the Respondent’s bad faith, the Complainant has no other possibility than to file the present Complaint.

 

5. Parties Contentions

A. Complainant

The domain names are identical or confusingly similar to a trademark or service mark for which the Complainant has rights.

ACCOR owns and operates several hotels under the name Sofitel. SOFITEL is a well-known trademark protected worldwide in particular for hotels and restaurants. Accor is the owner of numerous trademark rights throughout the world related to the SOFITEL brand, especially in the field of hotels and restaurants:

- SOFITEL, International Trademark n 406255, filed on April 18, 1974, renewed and covering goods and services in all classes.

- SOFITEL, International Trademark n 614992, filed on October 29, 1993, renewed and covering goods and services in classes 35, 36 and 37.

- SOFITEL, International Trademark n 642172, filed on August 31, 1995 and covering goods and services in classes 35, 36, 37 et 42.

- HOTEL SOFITEL EXCLUSIVE CARD, International Trademark n 719547, filed on August 16, 1999 and covering goods and services in class 42.

- SOFITEL ACCOR HOTEL & RESORTS, International Trademark n 779873, filed on February 5, 2002 and covering goods and services in classes 16, 35, 42 et 43

- WORLD AND WORLD BY SOFITEL, International Trademark n 786222, filed on April 26, 2002 and covering goods and services in classes 16 and 43.

- SOFITEL, US trademark n79015763 filed on August 26, 2005 and covering services in classes 39 and 43.

- SOFITEL ACCOR HOTELS AND RESORTS, United States trademark n78107333 filed on February 7, 2002 and covering services in classes 35 and 43.

- HOTEL SOFITEL EXCLUSIVE CARD, United States trademark n75597827 filed on November 30, 1998 and covering services in class 42.

The mark SOFITEL is well-known and is protected in particular in United States of America.

Furthermore, trademarks are protected by common law in the United States of America.

Moreover, the Complainant operates, among others, the domain name reflecting its trademark <.sofitel.com>, registered on April 11, 1997.

The domain names <sofitel-hotel.info> and <sofitel-hotel.biz> reproduce entirely the Complainant’s trademarks SOFITEL.

Additionally, the mere addition of the term “hotel” leads people to think that these domain names are specific to the hotels of Sofitel and are insufficient to avoid any confusion. The term ‘hotel’ actually increases the confusion because the term falls under the services provided by the Complainant. Numerous WIPO decisions recognize the addition of a generic denomination, in particular to a famous trademark, is not sufficient to avoid confusing similarities, but the addition of, for instance, the generic word “hotel” to a trademark only suggests that the services and goods marketed are those of the trademark holder (Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102, Microsoft Corporation v. SL Mediaweb, WIPO Case No. D2003-0538 and Caesars World, Inc v. Alaiksei Yahorau WIPO Case No. D2004-0513).

As a result, it is obvious that the disputed domain names <sofitel-hotel.biz> and <sofitel-hotel.info> are strictly identical or at least confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain directly refers to the Complainant’s services.

For all the above-cited reasons, it is established that the Complainant has trademark rights in the name that is reproduced in its entirety in the domain names in dispute, and therefore the condition of Paragraph 4(a)(i) is fulfilled.

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating said mark.

Furthermore, the Respondent has no prior rights or legitimate interest in the domain names. The Respondent never used the term “Sofitel” in any way before or after the Complainant started their business.

The Respondent is not known under the name “Sofitel” or any similar term.

The conduct of the Respondent is merely a parasitical behaviour. The Respondent is not making any legitimate non-commercial or fair use of the domain names, as the disputed domain names redirect Internet browsers to a pornographic webpage titled ‘VIDEO PORTAL’.

Moreover, the strict reproduction of the well-known trademark “SOFITEL” constitutes an obvious intent to divert Internet browsers.

In fact, since the domain name in dispute is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was attempting to conduct a legitimate activity.

Furthermore, the Respondent did not answer to the Complainant’s email on July 12, 2007, and cease and desist letter on July 12, 2007 and did not demonstrate any right or legitimate interest regarding the disputed domain names. The panel argues, “Primarily on this basis the Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and has not provided the Panel with any explanation as to whether this is the case or not or whether there are indeed legitimate reasons for his choice of the domain name. The Respondent must bear the consequences of this lack of information and in the light of the other information provided by the Complainant and which raises serious doubts as to the legitimacy of the Respondents registration” (see GEA AG v. Josue da Silva, WIPO Case No. D2003-0727).

For all the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect of the domain names in dispute under Paragraph 4 (a)(ii) of the Policy.

The domain name was registered and is being used in bad faith.

Registration in bad faith:

The name “Sofitel” does not have any meaning in English. The Respondent had no reason to choose these domain names other than profiting from the reputation of the Complainant.

With regard to registration in bad faith, it seems obvious that the Respondent knew or must have known the trademark SOFITEL at the time it registered the domain names. It seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain names. The Respondent had the Complainant in mind while registering the domain names in dispute because of the addition of ‘hotel’ to the domain names. The Respondent does not dispute having knowledge of the Complainant’s trademarks.

Use in bad faith:

The Respondent is trading on the goodwill existing in the Complainant’s famous service mark to intentionally attract Internet users to Respondent’s website for purposes of commercial gain. This constitutes evidence of bad faith use and registration under Paragraph 4(b) (iv) of the Policy (Six Continents Hotels, Inc., v. Anti-Globalization Domains, WIPO Case No. D2003-0765; Yahoo ! Inc. v. Data Art Corp., WIPO Case No. D2000-0587). Thus, the Respondent registered and uses the disputed domain names and is perfectly aware that it infringes upon the Complainant’s rights. It was previously established that bad faith is present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303,).

Additionally, the panel holds, ‘‘In similar circumstances, prior panel decisions have consistently recognized that the registration of domain names which are then used to operate “click-through” sites, can be considered to be evidence of bad faith”. (Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation WIPO Case No. D2007-0440). Thus, the fact that both disputed domain names ‘click-through’ to ‘VIDEO PORTAL’ a pornographic web page acts as evidence of use in bad faith.

Moreover, the letter sent by registered mail and e-mail to the Respondent’s address mentioned on the Whois database of the disputed domain name was never responded to. Previous decisions hold that a lack of a response on the part of a Respondent is an element of registration and use in bad faith. In addition, the address provided by the Respondent is false. Even though there is no express evidence proving that invalidity of this address, a reasonable person can assume that the address 12345 Kandagar in Afghanistan is implicitly invalid. Additionally, the phone number provided by the respondent is 123456, which is obviously an invalid number. This is evidence of a clear lack of interest by the Respondent to prove a fair or legitimate interest for the disputed domain names (Transatlantique S.A. v. DOTSCOPE, WIPO Case No. D2004-1100, Banque). Previous panel decisions held, ‘[A] Respondent [who] supplied incorrect contact information to the registrar with which the disputed domain name is registered [is] bad faith in registering and using the disputed domain name [and acts as] evidence [of] Respondent’s use, upon information and belief, of false identification information in the registry record of the domain name.’ (Onkyo Corp. v. PluggedIn Software, WIPO Case No. D2002-0785,).

Finally, the fact that the disputed domain names divert web browsers to a pornographic website is evidence of bad faith. The panel held, “Indeed, the Complainant expresses great concern of Internet users coming to believe that the Complainant is actually associated with the sale of the pornography displayed on the re-directed website. WIPO Panel decisions have determined that the use of a domain name that is confusingly similar to another’s protected trademark to divert Internet users to a pornographic site is consistent with the finding that the domain name was registered and is being used in bad faith” (Centrale del Latte di Torino & C. S.p.A. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0931). Allowing the continued use of the domain names by the Respondent tarnishes the image of the Complainant and has the potential to cause serious economic damage. Additionally, the reputation of ‘Sofitel’ as a classy hotel chain suffers when the hotel chain is associated with the sale and distribution of pornographic material. Therefore, the actions of the Respondent illustrate that he knowingly uses the SOFITEL trademarks to increase traffic on ‘VIDEO PORTAL’ a pornographic website that is in no way associated with the Complainant.

Consequently, in view of the above it is established that the Respondent did both register and use the disputed domain names in bad faith in accordance with Paragraph 4(a) (iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the Respondent 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 interest in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Given the Respondent’s failure to file a Response, the Panel accepts as true all factual allegations of the Complainant. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain names.

A. Identical or Confusingly Similar

The Complainant owns and operates several hotels under the name Sofitel. The Complainant also holds several international trademark registrations for the mark SOFITEL for, among other things, hotel and restaurant services. All these trademarks represent prior rights in relation to the Respondent’s domain names.

The domain names <sofitel-hotel.info> and <sofitel-hotel.biz> both contain the Complainant’s trademark SOFITEL in its entirety. The mere addition of the term

“-hotel” is insufficient to avoid any confusion. Additionally the generic term ‘hotel’ actually describes the services provided by the Complainant under the SOFITEL trademark.

The “.info” and “.biz” suffixes denoting second-level domain status in the Respondent’s domain names do not affect the fact that the domain names are confusingly similar to the Complainant’s mark pursuant to Policy, Paragraph 4(a)(i).

Therefore the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain names. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.

Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain names, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled. The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The fact that the domain names, in addition to the distinctive and non descriptive word “sofitel”, also contain a generic word, “hotel”, describing the services provided by the Complainant under the trademark SOFITEL, makes it highly unlikely that the Respondent was unaware of the Complainant’s trademark at the time of registration of the domain names.

In the absence of any other explanation to why the Respondent chose domain names containing “sofitel-hotel”, the Panel, in view of the above facts, finds that the disputed domain names have been registered in bad faith.

The fact that both disputed domain names ‘click-through’ to ‘VIDEO PORTAL’ a pornographic web page, acts as evidence that the Respondent is trading on the Complainant’s service mark to intentionally attract Internet users to Respondent’s website for purposes of commercial gain. Here, the diversion of web browsers to a pornographic website is, in itself, evidence of bad faith.

Consequently, the Panel concludes that the contested domain names have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

 

7. Decision

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, <sofitel-hotel.biz> and <sofitel-hotel.info> be transferred to the Complainant.


Jonas Gulliksson
Sole Panelist

Date: October 9, 2007