The Complainants are Accor and SoLuxury HMC of France, represented by Dreyfus & associés of France.
The Respondent is Jaewan Lee of Republic of Korea.
The disputed Domain Names <accorhotells.com>, <sofitels.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2009. On May 5, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain names. On May 6, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on June 9, 2009. 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.
The Complainants are Accor and its subsidiary SoLuxury HMC, two companies incorporated under French law. Accor is one of the world's largest business organizations in travel, tourism and corporate services, while Sofitel is the premium hotel brand of SoLuxury HMC and is among the first European luxury hotel brands.
Accor is the owner of several Trademark Registrations for ACCOR, such as the International Trademark No 480492, registered on November 10, 1983 in classes 16, 39 and 42 and the International Trademark No 742032, registered on August 25, 2000 in class 38.
SoLuxury HMC is the owner of several trademark Registrations for SOFITEL, such as the International Trademark No 406255 registered on April 18, 1974 in classes 01 to 42, the International Trademark No 863332, registered on August 26, 2005 in classes 39 and 43 and the Korean Trademark, where the Respondent is based, No.2004-357, registered on March 3, 2004 in class 43.
The Complainants own and mainly communicates on the Internet notably via the web sites “www.accorhotels.com” and “www.sofitel.com”.
The Complainants are furthermore the registrants of the domain names <accor.com>, registered on February 23, 1998, <accorhotels.com>, registered on April 30, 1998 and <sofitel.com>, registered on April 11, 1997.
The Respondent registered the Domain Names <accorhotells.com> on March 5, 2006 and <sofitels.com> on December 28, 2004.
The Complainants point out that Accor, with its about 4,000 hotels in 100 countries worldwide, is the European leader and one of the world's largest business organizations in travel, tourism and corporate services, operating several hotels especially in Europe but also in Republic of Korea, where the Respondent is based. The Complainants inform the Panel that also Sofitel luxury hotels, located today in about 50 countries, aim to become a new global reference in international luxury hotels and the first European luxury hotel brand in next years.
The Complainants indicate that, as soon as they became aware that the Domain Name <sofitels.com> was registered by the Respondent, a cease and desist letter based on their trademark rights was sent requesting the Respondent to amicably transfer the Domain Name. The Complainants highlight that the Respondent answered to this cease and desist letter stating that he would not have renewed the Domain Name at the expiration date because, according to him, the corresponding web site had few visitors and it was not sufficiently profitable. However the Domain Name was then renewed by the Respondent. The Complainants therefore sent a second cease and desist letter, following which they received from the Respondent a communication requesting USD 1,000 for the Domain Name as per copy of the communication provided to the Panel. As the Complainants found this proposal unacceptable, they offered 50 dollars as a reimbursement of the registration costs, but the Respondent never replied.
The Complainants also inform the Panel that, as soon as they became aware that the Respondent had also registered the Domain Name <accorhotells.com>, a new cease and desist letter and a subsequent reminder were sent without receiving any reply.
In the meantime, the Complainants noticed that the registrant's identity and email for both Domain Names had changed. Therefore, the Complainants sent another cease and desist letter to the Respondent, referred to both the Domain Names, both to the previous registrant email address and to the new one published on the WhoIs database. Thereafter, the Complainants received another communication - again requesting USD 1,000 but this time for both Domain Names - from the Domain Names' previous authoritative email address and signed in the name of the previous registrant.
The Complainants also highlight that, anyway - according to the WhoIs Database at the time of filing - the Respondent is actually the registrant and the administrative contact for both Domain Names.
The Complainants point out that the disputed Domain Names are confusingly similar to trademarks and domain names in which the Complainants have rights as they reproduce entirely the Complainants' well-known trademarks ACCOR and SOFITEL as the mere addition of the letters “s” and “l” constitutes a typical case of typosquatting based on misspellings.
With reference to rights or legitimate interests in respect of the Domain Names, the Complainants state that the Respondent is not affiliated with the Complainants in any way, nor the Complainants have authorized the Respondent to use or register any domain name incorporating said marks.
The Complainants also state that the strict reproduction of the well-known trademarks ACCOR and SOFITEL constitutes an obvious intent to divert Internet users in light of the fact that Respondent is not commonly known under the said names.
The Complainants emphasize that the Respondent has never used the disputed Domain Names in connection with a bona fide offering of goods or services, as they were redirected, before the Complainants' cease and desist letter, to parking pages with various pay-per-click links.
The Complainants conclude with reference to the issue of the rights or legitimate interest that the only reason for the Respondent to register and use the disputed Domain Names was to benefit from the reputation of the trademarks ACCOR and SOFITEL.
With reference to the circumstances evidencing bad faith at the time of registration, the Complainants indicate that it is “hard to believe” that the Respondent was unaware of the existence of the Complainants and of their well-known trademarks at the time of registration of the disputed Domain Names.
In particular, the Complainants emphasize that numerous panel decisions recognized that the ACCOR trademark is well-known and has world-wide notoriety in relation to hotels.
The Complainants also highlight that the registration of the disputed Domain Names represent a typical case of typosquatting based on misspellings incorporated in official Complainants' domain names and that the Respondent registered the Domain Names with the only purpose of attracting Internet users to its own web sites.
As a circumstance evidencing bad faith in the use of the Domain Names, the Complainants highlight that the disputed Domain Names were redirected, before the cease and desist letter, to web sites displaying sponsored links related to hotels of competitors and that the Respondent has registered and used the Domain Names including well-known trademarks to capitalize on the Complainants' long history, their reputation and their goodwill and to gain revenue from it.
In view of the Complainants, an additional circumstance evidencing bad faith can be found in the communications sent by the Respondent in reply to the cease and desist letters, in which the Respondent stated, first that he was not interested in renewing <sofitels.com> because of the few visitors of the web site related to the Domain Name, and then requested an amount of USD 1,000 for the transfer of the Domain Name.
The Complainants also underline that the subsequent changes of the Domain Names' redirections, which were initially redirected to a parking page with commercial links, then became inactive, then were redirected to the official web site and are currently again redirected to a web site displaying sponsored links, reveal the use in bad faith of Respondent.
The Respondent did not reply to the Complainants' contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainants' submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted 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 Complainants must prove each of the following:
(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainants have provided evidence of ownership of a number of trademark registrations consisting in the trademarks ACCOR and SOFITEL.
The Panel finds that the disputed Domain Name <sofitels.com> is confusingly similar to the registered trademark SOFITEL owned by the Complainants since the Respondent has merely added a single letter “s” to the registered trademark. As stated in ACCOR v. I&M Raamatupidamise O/Accora Consult OÜ, WIPO Case No. D2006-0650, involving one of the Complainants and concerning the domain name <accora.com>, the panel stated “The Domain Name at issue reproduces entirely the mark ACCOR with the mere addition of the single letter “a” which moreover makes no difference with the Complainant's trademarks and may also be interpreted to be a misspelled suffix of ACCOR. Indeed the single letter “a” is an obvious attempt to “typosquat” the Domain Name and is insufficient to avoid confusion.”
See along the same lines ACCOR v. Eduardo Marchiori Leite, WIPO Case No. D2004-0680, where the panel stated “Respondent's domain name <thalassar.com> incorporates Complainant's registered trademark THALASSA in its entirety, and adds only the letter “r” to the mark. The addition of the letter “r” adds nothing distinctive, and the emphasis remains on the name THALASSA to attract the attention of Internet users. The deletion or addition of one letter is an insignificant change for the purposes of the Policy paragraph 4(a)(i)”. See also Reuters Limited. v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel finds that the disputed Domain Name <accorhotells.com> is also confusingly similar to the registered trademark ACCOR owned by the Complainants, since the mere addition of the generic term “hotels”, describing Complainant's activity, and of the single letter “l” does not exclude the likelihood of confusion between the Domain Name and the Complainant's trademark, whose notoriety has been recognised in many decisions (see Accor v.This Domain May be for Sale or Lease, WIPO Case No. D2008-0420, ACCOR v. Eliah Zusstone , WIPO Case No. D2006-0362 and Accor v. Domains by Proxy, Inc./Ostrid Company, WIPO Case No. D2008-0707).
The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227 where the panel found that “the Domain Name <riverbellecasiino.com> is almost identical, and is confusingly similar to Complainant's mark, RIVER BELLE, adding only a misspelling of the generic term “casino,” which describes Complainant's services. The result is a Domain Name that is distinctly suggestive of Complainant's “casino” services, linked with Complainant's RIVER BELLE mark. It also is apparently derivative of Complainant's RIVER BELLE ONLINE CASINO mark.” Along the same lines, see Royal Canin SA v. Zsofia Tallai, WIPO Case No. D2009-0241, concerning the domain name <royalcanineacademy.com>, where the panel found that the Domain Name was confusingly similar to the trademark ROYAL CANIN “from which it differs only in the additions of the letter “e”, the generic word “academy” and the generic top level domain suffix”.
In view of the above, the Panel finds that the Complainants have proven that the Domain Names are confusingly similar to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy 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.”
It is well-established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Names according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedent, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Names.
The Panel notes that the disputed Domain Names were at the time of the filing of the Complaint pointing to a sponsored pay-per-click web site. The Panel finds that under the circumstances the use of the disputed Domain Names merely for a pay-per-click page which directs visitors to various third party commercial web sites does not constitute a legitimate, non commercial use of the disputed Domain Names under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent's use of the Domain Name to resolve to a directory of commercial web sites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent's website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the web site are related to the Respondent or to the BILFINGER name”.
See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of paragraph 4(c)(iii) of the Policy.”
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it may, under appropriate circumstances, be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Names 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 holder's documented out-of-pocket costs directly related to the Domain Names; or
(ii) the holder has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder'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 holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of the widely known character of the Complainants' trademarks, the Respondent was more likely than not aware of the trademarks ACCOR and SOFITEL.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Clicuot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since, in light of the contents of the web page linked to the Domain Names containing direct link to hotel related business even indication different destination, the Respondent has succeeded to attract Internet users to a web site for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, supra, Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286). Moreover, in all likelihood, the Respondent currently profits by earning pay per click revenues from the Domain Names.
The Panel deems that also paragraph 4(b)(i) of the Policy is applicable to the present case since in light of the content of the correspondence attached to the Complaint, the Domain Names were as well registered for the purpose of selling them to the Complainant for an amount well in excess of the documented out-of-pockets costs. Indeed the Respondent initially offered to assign the Domain Name <sofitels.com> for USD 1,000 amount that is certainly over the ordinary costs of registration of a domain name see Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076, where it was found “the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other “out-of-pocket costs directly related to the domain name.”
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case, and as stated in Sports Holdings, Inc v. Whois ID Theft Protection, supra “it is open for the Panel to infer a prima facie case of bad faith registration”.
In view of the above, the Panel finds that the Domain Names were registered and are 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 names <accorhotells.com> and <sofitels.com> be transferred to the Complainant.
Date: June 23, 2009