WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, So Luxury HMC v. PrivacyProtect.org, n/a Ian Harding
Case No. D2011-0863
1. The Parties
Complainant is Accor, So Luxury HMC of Evry, France represented by Dreyfus & associés, France.
Respondents are PrivacyProtect.org and n/a Ian Harding of Nobby Beach, Australia and British Columbia, Canada, respectively.
2. The Domain Name and Registrar
The Disputed Domain Name <sofitelhiltop.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2011. On May 19, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Name. On May 19, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 25, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 30, 2011.
The Center verified that the Complaint together with the amended 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 May 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 22, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 1, 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.
The Panel extended the due date for the decision to July 22, 2011. The parties were notified of the extension.
4. Factual Background
Complainant has trademark registrations to the SOFITEL mark in 52 countries including an International Registration registered on August 30, 2007.
Registrant registered the Disputed Domain Name on February 12, 2011.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant consists of Accor and its subsidiary So Luxury HMC (“Luxury”). Accor and Luxury contend that as members of the same group of companies they constitute an entity for the purposes of initiating a UDRP action.
Luxury is the owner of the SOFITEL trademark and common law rights associated therewith in 52 countries in Europe, Africa, the Middle East, Pacific Asia and in North and South America. Luxury received an International Registration for the SOFITEL mark on August 30, 2007 and has used the International Registration to gain protection in many countries including Australia, the European Community, Syria and others. Accor contends that it has been a world leader in economic and mid-scale hotels and a major player in upscale and luxury hospitality services. For more than 40 years, Accor has provided services and currently operates about 4,100 hotels in 90 countries.
Luxury owns the website “www.sofitel.com” through which Internet users can book hotels. Complainant contends that a WhoIs search revealed that Respondent registered the Disputed Domain Name. Complainant contends that the Disputed Domain Name resolved to a website for the “Sofitel Hiltop Hotel” in London and that a “Sofitel Hiltop Hotel” logo appeared at the top of the webpage. Also, the website contained a hotel booking system which actually booked at the Westpoint Hotel in London and looked substantially identical to the actual website for the Westpoint Hotel, “www.westpointhotel.com”. Attempts to review, amend or cancel a reservation at the Disputed Domain Name caused Internet users to be redirected to an online hotel booking network at “www.hbnonline.co.uk”.
Complainant contends that Respondent has no rights or legitimate interest in the mark as Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use the SOFITEL mark, or to register a domain name incorporating the SOFITEL mark. Further, Complainant contends that Respondent is not commonly known by the name “Sofitel” and the services provided are those of the Westpoint Hotel and the Hotel Booking Network not the fictional Sofitel Hiltop Hotel.
Finally, Complainant contends that the fame of the SOFITEL mark and the misrepresentations of the website at the Disputed Domain Name demonstrate that Respondent registered and is using the Disputed Domain Name in bad faith. Because of the fame of the SOFITEL mark, Respondent must have known of the its renown before registering and therefore registered the Disputed Domain Name in bad faith. Respondent’s use was in bad faith as it misled Internet users into booking reservations at the Westpoint Hotel under the guise of booking at the Sofitel Hiltop Hotel.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Here, Respondent provided no response, and the deadline for so doing expired on June 20, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a).
This Panel finds that Accor and Luxury are entitled to act collectively as Complainant in line with previous UDRP decisions. See L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869 (citing Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie, WIPO Case No. D2002-0760, which held “that the naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary”).
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of a valid and subsisting International Registration and rights at common law for the SOFITEL mark.
The Disputed Domain Name, however, is not identical to the SOFITEL mark. Therefore, the first issue is whether the Disputed Domain Name and the SOFITEL Mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s SOFITEL mark; (2) the term “hiltop”, and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “sofitelhiltop”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the term “hiltop” as a suffix to the SOFITEL mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the SOFITEL mark because the term “hiltop” is descriptive regardless of the misspelling of “hilltop”. See Brown & Bigelow, Inc .v. Site Ads Inc., NAF Claim No. FA 96127 (<hoylecasino.com>, was found to be confusingly similar to the complainant's HOYLE trademark); See Shaw Industries Group, Inc., Columbia Insurance Company v. VIPGeek LLC, WIPO Case No. D2010-1783 (finding <shawcarpetchicago.com> confusingly similar to SHAW marks). The addition of a descriptive term does not negate the confusing similarity between the SOFITEL mark and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> , among others, confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> , among others, confusingly similar to TELSTRA).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying the test described in Yell, the overall impression of the Disputed Domain Name in the present case is that it is a reference to Complainant or to Complainant’s SOFITEL Mark. As the Disputed Domain Name uses the mark SOFITEL, it is confusingly similar to Complainant’s SOFITEL mark.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <sofitelhiltop.com>, is confusingly similar to Complainant’s SOFITEL mark in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the SOFITEL mark, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261. Additionally, Complainant has provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine SOFITEL services. Based on exhibits accompanying the Complaint, Respondent's website actually makes reservations at the Westpoint Hotel, a competitor of Complainant.
In the absence of a response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the SOFITEL mark in the Disputed Domain Name and that Respondent is seeking to attract Internet users through Complainant's widely-known mark for Respondent's own commercial purposes. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. The evidence suggests that Respondent is using the Disputed Domain Name for commercial benefit to misleadingly divert consumers to its website and confuse those consumers into believing that there is some relationship, sponsorship, affiliation or endorsement with Complainant. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when respondent attempts to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service offered on respondent’s website.
Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the SOFITEL mark and that the mark is well-known. Taken together, these facts make it likely that Respondent knew of Complainant’s mark and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
Further, it is well established that using a domain name which incorporates a trademark to offer the services of competitors of the trademark owner is likely to cause confusion among consumers as to the source of services or to confusingly suggest sponsorship by the trademark owner. See, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, although the website is currently inactive, Respondent has used the Disputed Domain Name to attract Internet users to a website which blatantly misrepresents to users what services are purchased. Panels often find that websites offering competitors’ products which could cause confusion as to sponsorship constitute bad faith. Id. Respondent goes beyond offering competitors’ services to the users that could cause confusion as to sponsorship and instead fraudulently misrepresents to the user that the reservation is at the Sofitel Hiltop Hotel when in fact the reservation is at the Westpoint Hotel. Such manipulation and fraud unquestionably constitutes bad faith.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that the Complainant has proven the third and final element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <sofitelhiltop.com> be transferred to Complainant.
Michael A. Albert
Dated: July 22, 2011