WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR S.A. v. springflex

Case No. D2008-0615

 

1. The Parties

Complainant is ACCOR S.A., Évry, France, represented by Cabinet Dreyfus & Associés, France.

Respondent is springflex, Orange, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sofitelsleep.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 22, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 22, 2008, Network Solutions, LLC 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 April 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 20, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 28, 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 largest business organizations in travel, tourism and corporate services. It owns about 4,000 hotels in 90 countries worldwide, especially in Europe.

Sofitel is Complainant’s premium hotel brand. Complainant owns 193 Sofitel hotels in about 50 countries worldwide. Complainant also owns the website “www.sofitel.com” to allow Internet users finding and booking hotel reservations.

Complainant owns, inter alia, the following SOFITEL international marks: No. 406255, filed on April 18, 1974, renewed and covering goods and services in all classes; No. 614992, filed on October, 29, 1993, renewed and covering goods and services in classes 35, 36 and 37; No. 642172, filed on August 31, 1995 and covering goods and services in classes 35, 36, 37 and 42; No. 719547, filed on August 16, 1999, and covering goods and services in class 42; No. 863332, designating United States, registered on August 26, 2005; No. 927545, designating United States, registered on April 23, 2007; Community mark 004303277 filed March 22, 2005 and registered on February 3, 2006, for classes 35, 39 (travel agencies and tourist offices, etc) and 43 (hotels, restaurants, temporary accommodation, temporary accommodation reservations, etc.).

The <sofitelsleep.com> domain name was registered by Respondent on November 9, 2007.

The disputed domain name redirects Internet users to a list of sponsored links, including to hotel reservation websites.

On November 30, 2007, Complainant sent a cease-and-desist letter to Respondent, asking to transfer the domain name at issue, based on Complainant’s rights in the SOFITEL mark. On December 19, 2007, Complainant sent a reminder to Respondent. Respondent never answered.

 

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

- The domain name at issue reproduces entirely the SOFITEL marks. The mere addition of the term “sleep” leads people to think that the domain name belongs to Complainant’s Sofitel hotels and refers to Complainant’s services, thus implying a high risk of confusion to consumers.

- Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not affiliated with Complainant in any way. Complainant has not authorized Respondent to use or register its trademarks and service marks, or to seek the registration of any domain name incorporating Complainant’s SOFITEL marks. Respondent never used the term “Sofitel” before or after Complainant started its business. Respondent is not known by the name “Sofitel” or any other similar term. The domain name in dispute is directed to a search engine proposing sponsored links to travel and hotel websites. This conduct is an act of unfair competition, and not any legitimate noncommercial or fair use of the domain name.

- Respondent registered and is using the domain name in bad faith. Respondent had no reason to choose the disputed domain name other than profiting from Complainant’s reputation. Respondent knew or must have known the SOFITEL mark at the time it registered the domain name. The very combination of the terms “sofitel” and “sleep” clearly indicates that Respondent had Complainant in mind while registering the domain name at issue. Respondent apparently registered the disputed domain name to disrupt Complainant’s business, as it used the domain name with sponsored links to hotel reservation websites. Such services are in competition with Complainant, which has a reputation for its high standards. It seems likely that the domain name is being used to take advantage of the well-known SOFITEL marks and to pass off as a business affiliated with Complainant. This also constitutes a use in bad faith since average consumers may think that the domain name is related to Sofitel’s official website, or at least that it resolves to Sofitel’s official hotel reservation website. The lack of response to Complainant’s cease-and-desist letter and reminder is an additional evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

 

6. Discussion and Findings

For the Complainant to succeed it must prove, in accordance with paragraph 4(a) of the Policy, that:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has submitted sufficient documentary evidence of its numerous trademark registrations for SOFITEL. See section 4 above. Thus, it has shown that it has rights in the mark SOFITEL.

The disputed domain name consists of the SOFITEL mark plus the term “sleep” and the gTLD “.com”. “Sleep” is a common and generic word, and descriptive or indicative of the services provided by Complainant at its Sofitel hotels. This addition reinforces an overall impression of confusion of the domain name with Complainant’s mark. See ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988 (considering that the addition of a generic term such as “demeure” only ads to the similarity to the trademark SOFITEL); see also Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (finding that the addition of a descriptive and/or generic word in the domain name does not sufficiently distinguish it from Complainant’s mark).

Therefore, the Panel finds that the domain name at issue is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Complainant denies that Respondent may find support in any of the circumstances of Policy paragraph 4(c). In absence of any evidence in favor of Respondent, the Panel believes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain name at issue. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “http://www.wipo.int/amc/en/domains/search/overview/index.html”.

In the instant case, Respondent is in default, and has not provided any evidence in its own favor. The only evidenced use of the domain name by Respondent consists of the disputed domain name being redirected to websites offering hotel reservations, that is, services in direct competition with Complainant and creating confusion among Internet users about the source of such offering. This use of the domain name is neither a bona fide offering nor a non-commercial or fair use of the domain name pursuant to either paragraphs 4(c)(i) or 4(c)(iii) of the Policy.

Accordingly, the Panel concludes that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is satisfied that Complainant’s Sofitel hotels and SOFITEL marks are widely- known worldwide. Further, the Panel agrees with Complainant that the very combination of the terms “sofitel” and “sleep” suggests that Respondent had Complainant in mind and was aware of its Sofitel hotels while registering the domain name in dispute, i.e. that the domain name was registered in bad faith. See ACCOR v. Jose Manuel Fernandez Garcia, cited above.

As to use in bad faith, the Panel notes that the domain name at issue is being redirected to websites offering hotel reservation, in direct competition with Complainant’s hotel reservation services, thus creating confusion as to the source of such services. Such redirection presumably was made to generate some income, big or small, by using “pay-per-click” or “click-through” systems, i.e. for commercial gain. Moreover, according to Complainant’s Annex 5 to the Complaint, one of the links to which Respondent has redirected the disputed domain name to is entitled “Golden Tulip Hotel Amsterdam”, a hotel competing with Complainant.

The Panel also notes that the website at the disputed domain name includes a link to “Chaine hoteliere” [sic]. When the Panel attempted to connect his browser to this link, a legend appeared stating “We were unable to find results for your search term ‘Chaine Hoteliere’”. Thus, instead of redirecting Internet users to any of Complainant’s websites, Respondent appears to be misleading the average Internet user into concluding that Complainant is unable to professionally serve its customers and operate an informational website.

Under these circumstances, the Panel concludes that such redirection is a circumstance of bad faith registration and use under Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”). See Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449, considering that WIPO panels have consistently recognized that the registration of domain names confusingly similar to complainant’s trademarks, and then used to operate “pay-per-click” sites, are considered to be evidence of bad faith.

Accordingly, the Panel concludes that the domain name in dispute was registered and is being used in bad faith.

 

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 name <sofitelsleep.com> be transferred to Complainant.


Roberto Bianchi
Sole Panelist

Dated: June 11, 2008