WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Private Registration, WhoisGuardService.com
Case No. D2011-2296
1. The Parties
The Complainants are Accor of Evry, France and SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <sofitelsydney.com> (the “Domain Name”) is registered with 1st Antagus Internet GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to 1st Antagus Internet GmbH a request for registrar verification in connection with the Domain Name. On January 11, 2012, 1st Antagus Internet GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 12, 2012 the Center notified the Parties that the Language of the Registration Agreement was German but that the Complaint was filed in English. The Complainants submitted their request for English to be the language of the proceedings by email on January 12, 2012. The Respondent did not submit any answer to the Center’s notice. Thus, the Center decided to proceed in both English and German, the language of the proceedings being reserved to the Panel once duly appointed.
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 January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2012.
The Center appointed Gérald Page as the sole panelist in this matter on February 27, 2012. 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
The Complainants are major world-wide hotel operators and operate more than 4,200 hotels in 90 countries. Accor operates a number of hotel chains including Pullman, Novotel, Mecure and IBIS. SoLuxury HMC is a subsidiary of Accor and operates the Sofitel chain of hotels in 52 countries.
The Complainants operate 157 hotels in Australia, four of which are Sofitel hotels, One of these hotels is the Hotel Sofitel Sydney Wentworth, located in Sydney, Australia. The Complainants also operate 102 hotels in China, which include 20 Sofitel branded hotels.
The Complainants have registered a device mark consisting solely of the word “Sofitel” (the “SOFITEL Mark”) as a trade mark around the world including in Australia and in China where the SOFITEL Mark has been registered since August 30, 2007 (International trademark SOFITEL registration no. 939096).
The Complainants also own a number of domain names linked to websites that can be used to book hotels and promote their services, including <sofitel.org> and <sofitel.com>. These domain names were registered in 2001 and 1997 respectively.
The Domain Name <sofitelsydney.com> was registered on September 28, 2008 by the Respondent. It is used only to direct Internet users to a parking page displaying sponsored links to hotels.
5. Parties’ Contentions
The Complainants make the following contentions:
(i) that the Domain Name is confusingly similar to the Complainants’ SOFITEL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainants contend that as members of the same group of companies they constitute an entity for the purposes of initiating a proceeding under the Policy.
The Complainants argue that the Domain Name is identical or at least confusingly similar to the SOFITEL Mark, as it reproduces the mark in its entirety. The Domain Name then adds the geographical term “Sydney” as a suffix, which reinforces the likelihood of confusion as the Domain Name then refers to a hotel operated by the Complainants in Australia. It is likely that the Domain Name could mislead Internet users into thinking that it is associated with the Complainants because there is a Sofitel hotel in Sydney operated by the Complainants. Finally, the mere addition of the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainants’ trademarks and the Domain Name.
The Respondent has no rights or legitimate interests in the Domain Name as it is not in any way affiliated with the Complainants, nor have the Complainants authorized or licensed the Respondent to use the SOFITEL Mark, or to register a domain name incorporating the SOFITEL Mark. The Respondent has no prior rights or legitimate interests in the Domain Name and the registration of the SOFITEL trademark preceded the registration of the Domain Name for years.
The Respondent is not commonly known by the name “Sofitel”, in any way affiliated with Complainants, not authorized or licensed to use the SOFITEL Mark, or to seek registration of any domain names incorporating said mark.
The Domain Name used by the Respondent resolves to a parking page displaying sponsored links related to hotels. This does not amount to a right or legitimate interest.
The fame of the SOFITEL Mark, including its fame in Australia and in China, where the Respondent is located, means that it is unlikely that the Respondent was unaware of the SOFITEL Mark at the time of registration of the Domain Name. This is reinforced by the fact that the Domain Name redirects to a parking page displaying sponsored links related to hotels. Therefore the Domain Name was registered in bad faith.
The fact that the Respondent was – or should have been – aware of the SOFITEL Mark at the time of registration, and the redirection of the Domain Name to a parking page displaying sponsored links related to hotels indicates that the Respondent registered the Domain Name either to block the Complainants or to mislead Internet users and divert Internet traffic for commercial gain. This amounts to use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary matter, the Panel notes that the Complaint is made by two companies in the same group of companies against the same Respondent. The Rules, paragraph 3(a), provide that “any person or entity may initiate a complaint”. The Panel considers that members of the same group of companies may constitute an “entity” for the purposes of this provision, in line with the decisions in, to name but two examples, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760 and Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752.
6.1. Language of the Proceedings
According to the Registrar, 1st Antagus Internet GmbH, the language of the registration agreement for the Domain Name <softelsydney.com> is German. A copy of the registration agreement has not been produced in these proceedings.
Pursuant to the Rules, Paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainants and the Respondent as to the language of the proceeding.
Paragraph 11(a) of the Rules, however, allows the Panel to determine a language of the proceeding that differs from that of the registration agreement, having regard to all the circumstances of the proceeding. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, namely to ensure fairness to the parties and an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not place an undue burden on the parties and lead to delay to the proceedings (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainants have requested that English, rather than German (or German and English), be the language of the proceeding for the following reasons:
(1) The Complainants are located in France and have no knowledge of the German language. In order to proceed in German, the Complainants would have to retain translation services at a cost that would likely be higher than the overall cost for the present proceedings. Thus, using the German language would place an undue burden on the Complainants and unduly delay the proceedings.
(2) English is the language most widely used in international relations and it is one of the working languages of the Center. In the absence of a common language between the parties, English is the most appropriate and effective language to use.
The Respondent has not replied or otherwise commented on the question of the language of the proceedings.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to act in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, as well as the time and cost triggered by the choice of a particular language (Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent is familiar with the English language. In particular, the Panel notes that the Respondent has an English name “Private Registration, WhoisGuardService.com”. Furthermore, the Domain Name <sofitelsydney.com> is redirected to an English language parking page with sponsored links. Against this background, it appears likely that the Respondent is familiar with the English language (see Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). Had the Respondent filed submissions to the contrary, the Panel might have been willing to order that the Complaint be translated into German. Yet, not such submissions were made.
Against this background, the Panel finds that it is most unlikely that the Respondents would be prejudiced should only English, rather than German, be adopted as the language of the proceeding. On the other hand, having the Complaint translated into German, would fail to ensure the proceeding is conducted in a timely and cost effective manner.
For these reasons, the Panel determines, pursuant to paragraph 11(a) of the Rules, that the language of the present proceedings shall be English.
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements (see, paragraph 4(a) of the Policy):
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name was registered and is being used in bad faith.
The Complainants have the burden of proof of establishing each of these elements.
The Respondent has failed to file any reply in these proceedings and is therefore in default and the Panel shall draw appropriate inferences therefrom, paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
To meet the “identical or confusingly similar” requirement under paragraph 4(a)(i) the Policy, the Domain Name must be identical or confusingly similar to a trade or service mark held by the Complainants’.
The Complainants are the owners of the SOFITEL Mark, having registrations for SOFITEL as a trade mark throughout the world, including in Australia and in China, where the Respondent is based. The SOFITEL Mark is a well-known mark, as confirmed in previous UDRP decisions, including Accor, SoLuxury HMC v. PrivacyProtect.org n/a Ian Harding, WIPO Case No. D2011-0863; Accor, SoLuxury HMC v. Yunsung, WIPO Case No. D2010-2198; and Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574.
The Domain Name consists of the SOFITEL Mark in its entirety and adds as a suffix the geographical term “Sydney”. The addition of a geographical term to a trademark is not sufficient to provide any distinctiveness to a domain name – see Carlsberg A/S v Persona l/ decohouse, decohouse, WIPO Case No. D2011-0972. This is especially so because the Complainants operate a Sofitel hotel in Sydney and Internet users would expect the Domain Name to refer to the Complainants’ operations in Sydney. A person viewing the Domain Name would easily be confused into thinking that it was registered by or otherwise connected with the Complainants.
For these reasons, the Panel finds that the Domain Name is confusingly similar to the Complainants’ SOFITEL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainants further have to show that, prima facie, the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. If such a prima facie case is made out, the Respondent has the burden of demonstrating rights or legitimate interests in the Domain Name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.”
The Respondent is not affiliated with the Complainants in any way and has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the SOFITEL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Domain Name <sofitelsydney.com> is redirected to a parking page displaying sponsored links related to hotels. This does not amount to a legitimate interest as the Respondent is attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainants’ SOFITEL Mark.
Finally, the Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Paragraph 4(b) 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owners of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the Respondent, at the time of registration of the Domain Name, knew or should have known of the existence of the SOFITEL Mark. This can be inferred from the reputation of the well-known SOFITEL Mark and the fact that, following its registration, the Domain Name redirected to a parking page displaying sponsored links related to hotels.
The Respondent’s registration of the Domain Name, despite the fact that it was or must have been aware of the Complainants’ rights and of the absence of its own rights or legitimate interests, amounts to a registration in bad faith. This is further confirmed by the Respondent having the Domain Name redirect to a parking page displaying sponsored links related to hotels, thus intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
It has been ruled regularly in various other cases that taking advantage of a trademark to generate click-through revenues is evidence of bad faith. The same can be said of the Respondent’s actions.
In addition, the Complainants have shown that, after registration of the Domain Name, the Complainant sent several communications to the Respondent, including a cease-and-desist letter, to which the Respondent did not reply. It would surely have given an explanation if it had a legitimate reason to use the Domain Name.
For these reasons, the Panel finds that the Respondent has registered and used the Domain Name in bad faith within the meaning of Paragraph 4(a)(iii) 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 Domain Name <sofitelsydney.com> be cancelled.
Dated: March 12, 2012