WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Yunsung
Case No. D2010-2198
1. The Parties
Complainants are Accor and SoLuxury HMC of Evry, France, represented by Dreyfus & associés, France.
Respondent is Yunsung of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The Disputed Domain Name <sofitel.net> is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 16, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 17, 2010, Bizcn.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” 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2011.
The Center appointed James W. Dabney as the sole panelist in this matter on January 19, 2011. 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
Complainants are Accor and its subsidiary SoLuxury HMC, both French companies in the hotel business. Among other international hotel brands, Complainants operate Sofitel-branded hotels in 52 countries in Europe, Africa, the Middle East, Pacific Asia, and in North and South America.
Complainants are the registrants of and conduct business at the domain names <sofitel.com>, which was registered on April 11, 1997, and <sofitel.org>, which was registered on April 30, 2001.
Complainants own an International Trademark Registration for the mark SOFITEL, No. 939096, for goods and services in classes 35, 36, 43 and 44, which was registered on August 30, 2007, and which designates the Republic of Korea, among numerous other countries. Complainants also own two (2) Republic of Korea trademark registrations for the mark SOFITEL, No. 4101850720000, filed August 30, 2007, covering services in classes 35, 36, 43 and 44, and No. 4100044650000, filed on June 11, 1994.
The Disputed Domain Name <sofitel.net> was created on July 18, 2001. According to the Registrar Verification, Respondent became the actual registrant of the Disputed Domain Name on July 18, 2005. The Disputed Domain Name resolves to a parking page containing pay-per-click links.
5. Parties’ Contentions
Complainants discovered that the disputed domain name <sofitel.net> was registered on July 18, 2001 by Respondent, who is located in the Republic of Korea.
On October 23, 2008, Complainants sent a cease and desist letter via email, fax and registered letter to Respondent, asserting their trademark rights and requesting that Respondent cease its use of the Disputed Domain Name <sofitel.net> and transfer the domain name. Complainants received a reply via email on October 27, 2008, in which Respondent demanded that Complainants purchase the Disputed Domain Name for USD 500 or “go to the NAF or WIPO”. Complainants replied by email on December 22, 2008, and offered to reimburse Respondent the sum of USD 50 for the domain name registration fees, as well as any transfer charges. Receiving no further reply from Respondent, Complainants sent a reminder to Respondent by email on December 31, 2008. On January 1, 2009, Respondent replied by email again demanding that Complainants “[p]urchase the domain at $500 or go to the UDRP”. Complainants then initiated the present proceedings to obtain the transfer of the Disputed Domain Name.
Complainants contend that the Disputed Domain Name <sofitel.net > reproduces Complainants’ well-known trademark SOFITEL in its entirety and identically, therefore, is confusingly similar to said trademark, in which Complainants have prior rights.
With respect to Respondent’s rights or legitimate interests in the Disputed Domain Name, Complainants state that Respondent is not affiliated with Complainants in any way, nor have Complainants authorized or licensed Respondent to use the SOFITEL trademark or register any domain name incorporating said trademark.
Moreover, Complainants state that Respondent has no prior rights or legitimate interests in the Disputed Domain Name, as Complainants’ registration of the SOFITEL trademark preceded by many years Respondent’s registration of the Disputed Domain Name. Complainants further contend that the Disputed Domain Name is so identical to their well-known SOFITEL trademark and domain names, Respondent cannot “reasonably pretend” it was intending to develop a legitimate activity through the Disputed Domain Name. Complainants note that Respondent never used the Disputed Domain Name in connection with a bona fide offering of goods or services, but rather pointed the Disputed Domain Name to a parking page displaying pay-per-click links, which are likely intended to generate revenues for Respondent.
Complainants conclude that Respondent’s offer to sell the Disputed Domain Name to Complainants for USD 500 demonstrates Respondent’s lack of legitimate interests or rights in the domain name.
Regarding bad faith, Complainants contend that it is “implausible” that Respondent was unaware of Complainants when it registered the Disputed Domain Name given how well-known Complainants are in the Republic of Korea, where they operate nine (9) hotels and own several trademark registrations.
Moreover, Complainants assert that SOFITEL is a well-known trademark throughout the world, making it unlikely Respondent was not aware of it. Complainants emphasize that previous panel decisions have recognized that the SOFITEL trademark is well-known worldwide.
Complainants contend that a quick trademark search or even a Google search would have revealed to Respondent that SOFITEL is owned by Complainants, and that Respondent’s failure to conduct any search contributes to its bad faith.
Moreover, Complainants note that Respondent gave the domain name registrar an incomplete mailing address, thereby attempting to conceal its identity.
With respect to Respondent’s use of the Dispute Domain Name, Complainants contend that by directing Internet users to pay-per-click links related to hotels, Respondent is using the Disputed Domain Name in bad faith by taking advantage of Complainants’ well-known SOFITEL trademark to capitalize on its worldwide reputation for Respondent’s commercial gain. Complainants note that prior panels have found such activities to constitute bad faith.
Complainants further contend that previous panels have consistently taken the view that an offer by a respondent to sell the domain name in dispute to a complainant for a figure substantially in excess of expenses incurred by the respondent in registering the domain name, as occurred in this case, constitutes use in bad faith.
Respondent did not respond to Complainants’ contentions.
6. Discussion and Findings
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all allegations of the complaint.”); Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
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 Complainants must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or a service in which Complainants have rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainants have established that they own rights in the SOFITEL trademark under paragraph 4(a)(i) of the Policy through their International Trademark Registrations, as well as their national registrations in the Republic of Korea. See Google, Inc. v. DktBot.org, NAF Claim No. 286993 (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s Disputed Domain Name incorporates Complainants’ distinctive trademark SOFITEL in its entirety and identically. As previous panels in UDRP cases have recognized, the incorporation of a trademark in its entirety is usually sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. See Sonia Rolland v. Belize Domain WHOIS Service, WIPO Case No. D2009-0480 (finding that SONIA ROLLAND and <soniarolland.com> are identical for purposes of the Policy). Furthermore, it is well established that the addition of the gTLD denomination “.net” to a trademark is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark. See, e.g., BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418 (finding that TIPP-EX and <tipp-ex.com> are identical for purposes of the Policy).
The Panel therefore concludes that the Disputed Domain Name is identical or confusingly similar to Complainants’ SOFITEL mark in which Complainants have valid rights. Thus, Complainants have established the first element of the Policy.
B. Rights or Legitimate Interests
Complainants must show that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent may establish a right or legitimate interest in the Disputed Domain Name 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 falls on the Complainants. However, in accordance with UDRP precedents, it is sufficient that Complainants show a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name in order to shift the burden on Respondent to provide evidence to the contrary. If Respondent fails to demonstrate rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. See 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.
Complainants have established that Respondent was not authorized or licensed to use the SOFITEL trademark or to apply for or use any domain name incorporating the mark. See Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”). Moreover, there is no evidence that Respondent ever used the Disputed Domain Name in a legitimate manner or has any other legal right in the SOFITEL mark. Indeed, the Disputed Domain Name was registered many years after Complainants registered the SOFITEL mark in the Republic of Korea, and used it extensively worldwide. The only use of the Disputed Domain Name made by Respondent has not been in connection with a bona fide offering of goods or services, but rather to generate revenues by pointing the disputed domain name to a parking page displaying pay-per-click links. Respondent thus could not credibly claim that the Disputed Domain Name is intended to be used for any legitimate purpose or interest. See Drexel University v. David Broud, WIPO Case No. D2001-0067 (“rights or legitimate interest cannot be created where the user of the domain name at issue would not choose such name[s] unless he was seeking to create an impression of association with the Complainant.”).
Furthermore, by failing to submit a Response to the Complaint, Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the Disputed Domain Name. See Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (finding that the respondent’s default is a consideration to be taken into account in assessing whether the respondent has rights or legitimate interests in the domain name).
Thus, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain names and Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
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 Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who are the owners of the trademark or service mark or to a competitor of that Complainants, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent's website or location.
With respect to bad faith at the time of the registration, the Panel finds that Respondent was more likely than not to be aware of Complainants’ well-known trademark SOFITEL in view of its extensive worldwide use and reputation. Indeed, this would appear to be a case of “opportunistic bad faith” in the registration of a domain name that incorporates in its entirety a well-known trademark. See Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257; Veuve Clicquot 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; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103; 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 also finds paragraph 4(b)(i) of the Policy to be applicable in view of the correspondence between the parties wherein it is clear the Disputed Domain Name was registered for the purpose of being sold to the Complainants for an amount in excess of the out-of-pocket registration costs. See Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076 (“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.’”).
Additionally, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in view of the hotel business-related pay-per-click links that appear on the web page linked to the Disputed Domain Name. Respondent apparently has succeeded in attracting Internet users to a web site for commercial gain, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of Respondent’s services. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; 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, Respondent likely profits by earning pay-per-click revenues from the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. Complainants have proven element 4(a)(iii) 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 <sofitel.net> be transferred to Complainants.
James W. Dabney
Dated: February 2, 2011