WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR S.A. v. Hoshang Fatakia
Case No. D2008-0107
1. The Parties
Complainant is ACCOR S.A., Evry, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Hoshang Fatakia, Banglamung, Pattaya City, Chonburi, Thailand.
2. The Domain Name and Registrar
The disputed domain name <sofitelpattaya.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008. On January 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 25, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Response was filed with the Center on February 21, 2008.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 29, 2008. 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
Complainant is one of the world’s largest hotel operators with hotels in ninety countries including Pattaya, Thailand. Its premium level hotels operate under the name and trademark SOFITEL in fifty countries including Thailand. Complainant is the owner of several trademarks consisting of, or including the word SOFITEL, in respect of hotel and related services, including International Registration No. 406255 dated April 18, 1975 and three registrations in Thailand dating from March 21, 1996, September 13, 2001 and August 20, 2003 respectively. It owns the domain name <sofitel.com> registered in 1997 and operates a website relating to its hotels at that domain name.
The disputed domain name was created on December 9, 2006.
No information is available in relation to Respondent other than that he is the owner of the domain name and has an address in Pattaya City, Thailand.
On March 19, 2007, Complainant’s lawyers sent a letter of demand to Respondent demanding, inter alia, the transfer of the domain name. There ensued a chain of email correspondence between Respondent and Complainant’s solicitors in the course of which Respondent asserted his right to the domain name on a “first-come-first-served” basis and invited Complainant to buy the domain name from him. In further correspondence Complainant offered to buy the domain name for 50 Euros to cover Respondent’s out-of-pocket expenses. In reply, Respondent stated that he had marketed the domain name and rented it to his client Malee Travel and it would earn more than 50 Euros per day. Respondent offered to sell the domain name to Complainant for 25,000 Euros.
5. Parties’ Contentions
Complainant contends as follows:
A.1 Confusingly Similar Trademark
Complainant contends it has clearly established rights in the trademark SOFITEL and that the disputed domain name comprises that trademark with the mere addition of the geographic locator “pattaya”. Complainant therefore contends that the addition of the generic word is insufficient to give any distinctiveness to the domain name in dispute and cites in support, PepsiCo, Inc. Inc v. Kieran McGarry, WIPO Case No. D2005 0629. Complainant contends that Internet users would be likely to conclude that a website accessible at the disputed domain name would be a site specific to the Complainant’s hotel located in Pattaya.
A.2 Rights or Legitimate Interests
Complainant asserts that Respondent is not in any way affiliated with Complainant, is not authorized to use or to seek registration of any domain name incorporating its marks. Complainant says Respondent is not known under the name Sofitel or any similar term and is not making any legitimate non-commercial or fair use of the domain name having rented it to Malee Travel with an obvious intent to misleadingly divert Internet users.
A.3 Registration and Use in Bad Faith
Complainant contends that Respondent had no reason to choose the disputed domain name other than for the purpose of profiting from the reputation of Complainant. Complainant says that it is obvious that the Respondent knew, or ought to have known the SOFITEL trademark at the time of its registration and registered the domain name in full knowledge of Complainant’s rights. Complainant contends that Respondent registered the disputed domain name and is using it to disrupt Complainant’s business by providing at the domain name sponsored links to hotel reservation websites in competition with Complainant. According to Complainant the renting of the domain name to Malee Travel and the offer to sell the domain name for 25,000 Euros indicates that Respondent registered the domain name for the purpose of renting or otherwise transferring the name to Complainant and is using the domain name in an attempt to attract Internet users to Respondent’s website for financial gain.
Respondent does not dispute that he was aware of Complainant’s name and trademark SOFITEL but contends that as there was no registration of the combined words “Sofitelpattaya” it was his original idea to combine the two words and he was entitled to register them as a domain on a “first-come-first-served” basis. Respondent contends that Complainant is attempting for commercial gain to take the domain name from him and profit from his idea and promotion of the domain name.
6. Discussion and Findings
In order to succeed Complainant must establish:
(i) that the domain name is identical or confusingly similar to a name, trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has produced clear evidence that it has rights in the trademark SOFITEL including rights in Thailand.
The domain name consists of Complainant’s trademark SOFITEL combined with the word “Pattaya”. The dominant and distinctive component of the domain name is “sofitel”, which is identical to Complainant’s SOFITEL trademark. Furthermore, Pattaya is a prominent resort city in Thailand in which Complainant operates a hotel. It is common parlance to couple the name of a hotel with the name of the city in which it is located. The combined expression then serves to particularly identify the location of the hotel concerned. Thus, persons seeing the expression Sofitel Pattaya would naturally assume that it referred to a Sofitel hotel located in Pattaya. The disputed domain name has the same effect. Persons seeing that domain name would assume that it would lead to a website which is associated with a hotel of that name in that location. Adding “Pattaya”makes confusion more, not less, likely. See for example PepsiCo, Inc. v. Kieran McGarry, supra and also Wembley National Stadium Ltd v. Tim Gordon, WIPO Case No. D2000-1218.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark SOFITEL in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant asserts that it has given no licensing or authority to Respondent to use its SOFITEL trademark in the domain name and that Respondent had not, before notice of the dispute made any bona fide use or preparations for use of the domain name, was not commonly known by the domain name and was not making in any legitimate non-commercial or fair use of the domain name. Respondent has produced no evidence in rebuttal of any of the above propositions and has in fact acknowledged that his use of the domain name by rental to a competitor of Complainant was done in the knowledge of Complainant’s rights in the trademark SOFITEL. Such use is not use in the bona fide offering of goods or services by reference to the domain name, see for example The Planetary Society v. Salvador Rosillo Domainsforlife.com, WIPO Case No. D2001-1228.
Respondent’s only claim to legitimacy is that he first thought of combining Sofitel and Pattaya and is therefore entitled to the domain name on a “first-com-first-served basis”. That does not create a right or legitimate interest where the name chosen takes the trademark of another.
The Panel therefore finds that Respondent does not have any right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
The evidence of Complainant’s worldwide reputation, including, that of its operations in Thailand, point overwhelmingly to the probability that Respondent was aware of Complainant’s rights in the SOFITEL trademark at the time of registration. Respondent indicated that he was so aware by referring to the building of Complainant’s resort in Pattaya over two years, taking in a period prior to the date of registration of the disputed domain name. Respondent’s actions in leasing the domain name to the operator of a travel business in the same area of operation as, and in competition with, Complainant, and his offer to sell the domain name to Complainant for 25,000 Euros strongly indicates that Respondent’s purpose in registering the domain name was to sell or rent it to Complainant or a competitor of Complainant for consideration in excess of his out-of-pocket costs. The use of the domain name is clearly a deliberate attempt to attract Internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s widely-known trademark.
The Panel therefore concludes that the dispute domain name was registered and is being used in bad faith.
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 <sofitelpattaya.com> be transferred to Complainant.
Desmond J. Ryan AM
Dated: March 14, 2008