ADMINISTRATIVE PANEL DECISION
ACCOR v. Traffic Label Limited
Case No. D2008-1240
1. The Parties
Complainant is ACCOR, Evry, France, represented by Dreyfus & associés, Paris, France.
Respondent is Traffic Label Limited, of London, England.
2. The Domain Name and Registrar
The disputed domain name <sofitelcasino.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2008. On August 15, 2008, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 15, 2008, GoDaddy.com, Inc. transmitted by e-mail 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 August 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008. The Response was filed with the Center on September 10, 2008. Complainant submitted a supplemental filing to the Center on September 17, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 18, 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.
Complainant has not shown why its supplemental filing is relevant to this case nor why it was unable to provide that information in the Complaint; accordingly, the Panel does not consider Complainant's supplemental filing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2 (“[i]t is... helpful if the party submitting its [supplemental] filing can show its relevance to the case and why it was unable to provide that information in the complaint or response”).
4. Factual Background
Complainant states that it operates about 4,000 hotels in 90 countries, including under the trademark SOFITEL, which includes 172 hotels in 52 countries. Complainant states, and provides evidence to support, that it is the owner of the following trademark registrations:
- SOFITEL International Trademark n° 719547, covering goods and services in class 42
- SOFITEL International Trademark + logo n° 779873, covering goods and services in classes 16, 35, 42, 43
- SOFITEL International Trademark n° 786222, covering goods and services in classes 16, 43
- SOFITEL International Trademark n° 963333, covering goods and services in class 43.
- SOFITEL Community Trademark n° 004303277, covering goods and services in classes 35, 39, 43
- SOFITEL Community Trademark + logo n° 0939096, covering goods and services in classes 35, 36, 43, 44
- SOFITEL UK Trademark + logo n° M779873, covering class 42
- SOFITEL UK Trademark n° 1301910, covering class 35
- SOFITEL UK Trademark n° E4303277, covering classes 35, 39, 43
- SOFITEL UK Trademark n° 1301911, covering class 42
The trademarks above are referred to hereafter as the “SOFITEL Trademark.”
The Disputed Domain Name was registered on February 5, 2008.
5. Parties' Contentions
In addition to the factual background set forth above, Complaint contends, inter alia, as follows:
- The Disputed Domain Name is identical or confusingly similar to the SOFITEL Trademark because the Disputed Domain Name “entirely reproduces the Complainant's trademark SOFITEL and uses a generic term describing what kind of business the Complainant engages in.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent is not affiliated in any way with the Complainant”; “Respondent has no prior rights or legitimate interests in the domain name”; Respondent is using the Disputed Domain Name in connection with “a webpage containing links to hotel-booking websites,” which is not a legitimate, non-commercial or fair use; and Respondent's behavior is “merely parasitical.”
- The Disputed Domain Name has been registered and is being used in bad faith because Respondent “could not claim that he registered the domain name in good faith since he himself admitted that he is close with the previous CEO of ACCOR”; “the name SOFITEL does not have any meaning in English which virtually guarantees that the Respondent chose the disputed domain name intending to profit from the reputation of the Complainant”; Respondent “is attempting to profit off of the goodwill and famous trademark of the Complainant by redirecting internet users to a webpage that directs them to competing companies, in hopes that the Complainant would prefer to buy the domain name for an exorbitant price than to risk losing customers”; and Respondent's registration and use of the Disputed Domain Name constitutes “opportunistic bad faith.”
In an e-mail sent to the Center one day after the due date for the response, Respondent contends, inter alia, as follows:
- Respondent did not register the Disputed Domain Name but instead obtained it at an auction after the previous registrant failed to renew it.
- Respondent has “done nothing with this domain” other than parking it with the registrar.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the SOFITEL Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SOFITEL Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “sofitelcasino”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
The Disputed Domain Name contains the SOFITEL Trademark in its entirety, and the Panel here agrees with Complainant that the addition of the word “casino” does nothing to alleviate confusing similarity. Further, the Panel agrees with Complainant's assertion that “the term ‘casino' actually increases the confusion because the term falls under the services that are provided by the Complainant.” See, e.g., ACCOR S.A. v. Gary Weber, WIPO Case No. D2007-1053 (“the generic term ‘hotel' actually describes the services provided by the Complainant under the SOFITEL trademark”); ACCOR S.A. v. springflex, WIPO Case No. D2008-0615 (“‘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”); and Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (“the disputed domain name incorporates the whole of the Complainant's trademark PLAYBOY, together with a descriptive phrase associated with the Complainant and its renowned activities”) (internal punctuation omitted).
Accordingly, the Disputed Domain Name is confusingly similar to the SOFITEL Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy.
The Policy states that a registrant can demonstrate rights or legitimate interests in a domain name by, among other things, presenting evidence of any of the following:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
With respect to paragraph 4(c)(i), Respondent has not shown that it has done anything with the Disputed Domain Name other than use it in connection with a website offering links to goods or services that compete with those offered by Complainant under the SOFITEL Trademark. Further, numerous cases under the Policy make clear that using a domain name as Respondent has done here is not a “bona fide offering of goods or services.” See, e.g., Nationwide Mutual Insurance Company v. Domain Administration Limited, c/o David Halstead, WIPO Case No. D2006-1490 (agreeing with complainant's contention that a website with no connection to the complainant “other than to profit from misdirecting those looking for information on the Complainant” is not a bona fide offering of goods or services); MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550 (“the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant's trademark, do not confer a legitimate right to or interest in a domain name”); and Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan, WIPO Case No. D2004-0366 (“a skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors” is not a bona fide offering of goods or services).
With respect to paragraph 4(c)(ii), there is no evidence in the record that Respondent has been “commonly known by” the Disputed Domain Name.
With respect to paragraph 4(c)(iii), it is apparent that websites of the type associated with the Disputed Domain Name are commercial in nature given that such sites are designed to generate pay-per-click revenue for the entity providing the links on the page. See, e.g., Accor Société Anonyme v. Digi Real Estate Foundation, WIPO Case No. D2006-1411 (“Respondent is not making any legitimate non-commercial or fair use of the disputed domain name by directing it to a website with links to other hotel websites”); and Accor v. Thawan Laungrungthip, WIPO Case No. D2006-0365.
Therefore, the Panel is convinced that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Respondent's statement that it did not register the Disputed Domain Name because it obtained the Disputed Domain Name at an auction after the previous registrant failed to renew it is nonsensical, given that Respondent is, as confirmed by the Registrar, the registrant of the Disputed Domain Name. Thus, regardless of whether the Disputed Domain Name was previously registered by another entity and regardless of how Respondent obtained the Disputed Domain Name, it is self-evident that Respondent at some point in time registered the Disputed Domain Name.
In this case, although Complainant does not specify which of the above factors exists in this case, Complainant's arguments indicate that it believes bad faith is present pursuant to paragraph 4(b)(iv) of the Policy. Numerous cases make clear that bad faith exists when a respondent (a) uses a domain name that is confusingly similar to a complainant's trademark, (b) does not possess any rights or legitimate interests in the domain name, and (c) uses the domain name in connection with a website that provides links to competitive goods or services offered by third parties. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”); and Countrywide Financial Corporation v. Texas International Property Associates, NAF Claim No. FA0709001075750 (“[t]he disputed domain names in this case resolve to search engine websites, most of which appear to offer products and services in direct competition with those offered by Complainant. Respondent's use of these websites is neither a bona fide offering of goods or services… nor a legitimate noncommercial or fair use”).
In this Panel's view, it is irrelevant even if, as Respondent states, the competitive links on the website associated with the Disputed Domain Name are provided by the registrar, because “paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.” Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. Moreover, Respondent “cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct” and “Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Therefore, the Panel is convinced that Complainant has proven the third element 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 <sofitelcasino.com> be transferred to Complainant.
Douglas M. Isenberg
Date: October 2, 2008