WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Jim Green
Case No. D2011-1773
1. The Parties
Complainants are Accor and SoLuxury HMC (“Complainant”) of Evry, France, represented by Dreyfus & associés, France.
Respondent is Jim Green of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <grandmercurexidanbeijing.net>, <novotelpeacebeijing.net>, <novotelsanyuan.com>, <pullmanbeijing.com>, and <sofitelwandabeijing.com> (the “Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2011. On October 19, 2011, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On October 19, 2011, 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” 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 October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 16, 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
Complainant is a major worldwide hotelier, operating directly or through subsidiaries several hotel chains in numerous countries. Among these chains are SOFITEL, NOVOTEL, GRAND MERCURE, and PULLMAN. Complainant has registered trademarks in these hotel chain names, including registrations in China. Complainant operates hotels under each of these marks in China.
Each of the Domain Names was created in January 2011. Complainant contends that the Domain Names used to resolve to parking pages containing links to hotel-related sites. Complainant sent three cease-and-desist letters to Respondent, two in English and one in Chinese, between March 2011 and August 2011. Respondent did not reply to any of these letters. Respondent did, however, change its WhoIs information during this period, changing the registrant name from Serena Yu to Jim Green. The registrant’s e-mail address, however, remained the same. Complainant contends that Respondent is engaged in cyberflying. After receipt of the cease-and-desist letters, Respondent changed the content of websites to which the Domain Names corresponded, posting pictures of shops and restaurants situated near Complainant hotels.
5. Parties’ Contentions
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy. Complainant seeks cancellation – not transfer – of each of the five Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
The Panel finds that Complainant has rights in the marks SOFITEL, NOVOTEL, GRAND MERCURE, and PULLMAN, through registration and considerable use. The addition of the geographically descriptive words “Sanyuan,” “Beijing,” and “Xidan” to the respective mark in each of the Domain Names does not diminish the confusing similarity between the mark and the Domain Name. If anything, the geographic descriptors underscore the confusion, since Complainant operates hotels in these areas. With respect to the additional word “wanda” in one of the Domain Names and “peace” in another, the Panel concludes that these terms do not enhance the confusion, but do not sufficiently diminish the confusing similarity between the Domain Names and the marks. In each Domain Name, Complainant’s mark is clearly the dominant element.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (Apr. 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a response and hence did not effectively rebut any of Complainant’s assertions. Nor did Respondent avail himself of the opportunity to state his bona fide in response to Complainant’s cease-and-desist correspondence.
There is no evidence that Respondent has ever been authorized to use Complainant’s marks in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Names, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
According to Complainant, before the cease-and-desist letters, Respondent had used the Domain Names to resolve to parking pages where hotel-related services and links are offered. After the cease-and-desist letters, the websites at the Domain Names display pictures of shops, restaurants situated near the hotels of Complainant. In this Panel’s view, under the circumstances of this case, this use plainly does not give rise to any rights or legitimate interests on the part of Respondent.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Names in “bad faith” :
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) that Respondent 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 name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s 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.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. It is obvious that Respondent had Complainant’s marks in mind when registering the Domain Names. It would be a coincidence of epic proportions if Respondent had somehow registered five Domain Names containing four of Complainant’s distinctive marks. Moreover, it may be inferred that Respondent derives click-through revenue by virtue of the hotel-related hyperlinks at the websites to which the Domain Names resolved prior to receipt of the cease-and-desist letters. Certainly Respondent has not denied this plausible allegation.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <sofitelwandabeijing.com>, <novotelsanyuan.com>, <pullmanbeijing.com>, <grandmercurexidanbeijing.net>, and <novotelpeacebeijing.net> be cancelled.
Robert A. Badgley
Dated: November 21, 2011