WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2012-0009
1. The Parties
The Complainants are Accor and SoLuxury HMC both of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands, United Kingdom of Great British and Northern Ireland and Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <sofitelsantaclara.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2012. On January 5, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 5, 2012, Above.com, Inc. 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 the Complainant on January 9, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint] on January 12, 2012. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2012.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on March 1, 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
SoLuxury HMC is subsidiary of Accor.
Accor has been for more than 40 years one of the leader companies in the field of hospitality services.
Accor operates more than 4,200 hotels in more than 80 countries. It is part of a commercial group which includes known trademarks as PULLMAN, NOVOTEL, MERCURE and IBIS.
Accor has registered the domain names <sofitel.com> and <sofitel.org>.
SOFITEL is the luxury trademark of Accor’s subsidiary SoLuxury HMC, which is established in more than 50 countries throughout Europe, Africa, the Middle East, and Asia Pacific and in North and South America.
The Complainants use the Internet to communicate with its customers who can book their registrations through specific web sites of the Complainants.
Accor operates more than 150 hotels in Australia, specifically 4 Sofitel hotels. Accor also operates in Colombia, where it owns 2 hotels; one of them is called “Santa Clara”.
Accor has received the Tourism for Tomorrow Award in 2010, which is one of the most important awards in the world in the field of tourism.
The disputed domain name is a parking domain name page that includes a number of links related to hotels.
The Complainants have sent the Respondent a cease and desist letter on March 1, 2010, requesting the transfer of the disputed domain name and the disclosure of the identity of the current domain name holder. The request was sent again by means of emails, but none of them was ever responded.
The disputed domain name was registered on October 9, 2009.
The domain name <sofitel.com> was registered on April 11, 2007 and <sofitel.org> was registered on April 30, 2001.
The SOFITEL trademark was registered on August 30, 2007, and it is valid and in force.
5. Parties’ Contentions
The Complainants contend that the SOFITEL trademarks are well-known worldwide;
That they operate 157 hotels in Australia where the Respondent is living;
That the disputed domain name is identical or at least confusingly similar to the Complainants’ trademark SOFITEL. The association of the term “santaclara” to the Complainants’ trademark reinforces the likelihood of confusion, since the disputed domain name refers to hotels operated by the Complainants in Colombia, specifically “Cartagena Santa Clara hotel”;
That the Respondent has no rights or legitimate interests in respect of the disputed domain name, whereas the Respondent is not affiliated with any of the Complainants, nor have the Complainants authorized or licensed the Respondent to use their trademarks;
That the Respondent has no prior rights or legitimate interests in the disputed domain name, whereas the SOFITEL trademarks have been registered prior to the disputed domain name; and
That the disputed domain name was registered and is being used in bad faith by the Respondent. In this respect, the Complainants contend that in view of the reputation of the Complainants, the Respondent was aware of the existence of the Complainants’ trademarks. Also to be taken into account is the fact that the disputed domain name resolves to a parking page displaying sponsored links related to hotels. Also the data of the registrant of the disputed domain name are masked by a privacy shield, which combined with other elements may convey a finding of bad faith. All these facts evidence that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Panel renders its decision on the basis of the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element of the Policy is that the disputed domain name is identical or confusingly similar to any of the Complainant’s trademarks.
The Complainants own exclusive trademark rights with respect to the word “Sofitel” in more than 80 countries. Said trademark was registered in 2007 and is valid and in force to date.
The Complainants have submitted full proof of the fact that said trademark is well-known throughout the world and that it covers activities which are related to activity in hotels and tourism.
A significant number of UDRP WIPO decisions regarding the requirement of identity or confusingly similarity has been produced. In the Panel’s opinion, following the doctrine settled by the European Court of Justice, and in accordance with the previous UDRP WIPO decisions, a domain name used by a respondent may be identical or confusingly similar with a complainant’s mark if the former reproduces without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer (see Viacom International Inc. v. Mo-Team, WIPO Case No. D2009-1420).
The disputed domain name includes the word “sofitel”, which is registered as a trademark in the name of one of the complainants. Also to be taken into account is the fact that, in addition, the disputed domain name includes the word “santa clara”, which is the name of one of the hotels of the Complainants (specifically, the SOFITEL Cartagena Santa Clara Hotel). This use of the SOFITEL trademark with the name of the hotel could certainly lead to confusion to users of the Internet as to the source of the web site at the disputed domain name. Anyone having access to the web site at the disputed domain name could be confused as to whether the latter is linked to the Complainants to some extent.
The Panel comes to the conclusion that the word “santa clara” that is added to the disputed domain name is irrelevant to produce a significant difference for a medium type consumer of the products offered by the Complainants (i.e. hotels and tourism facilities and services), that are covered by the trademark SOFITEL.
Taking into consideration the above, and specifically the case law of the European Court of Justice and WIPO UDRP decisions rendered in similar cases, the Panel concludes that the disputed domain name is confusingly similar with the trademark of the Complainants.
The Panel finds that the Complainants have established the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that respondent may establish rights or legitimate interests in the disputed domain name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if respondent has not acquired trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests on the part of the respondent, the evidentiary burden shifts to the respondent to show, by plausible, specific evidence, that it does have a right or a legitimate interest.
In this case, the Respondent has not filed any response to the Complaint.
The Complainants contend that the Respondent has never been licensed to use the trademark SOFITEL, nor that it is affiliated with the Complainants whatsoever. Moreover, the Respondent has never been known by the disputed domain name.
Given the fact that the SOFITEL trademarks are well-known, the Panel finds that it is unarguable to pretend that the Respondent was not aware of the same, and that its target was to make a fair use of the disputed domain name or to undertake a legitimate business. As a matter of fact, none of the circumstances that prima facie would lead to consider that the Respondent has rights or legitimate interests in the disputed domain name is applicable to the disputed domain name.
Moreover, as the Complainants have established a prima facie case, the Respondent meets the burden of production in relation to any of the circumstances listed above as i), ii) and iii). And, in this regard, the Panel concludes that the Respondent has not submitted any evidence or proof of any of those circumstances (see Casa Tarradellas, S.A. / D. José Tarradellas Arcarons v. Indices de Gestión, S.L., WIPO Case No. D2001-0151; Compaigne Gervais Danone. v. Danup.com, WIPO Case No. D2008-0076).
All these circumstances lead the Panel to the conclusion that the Respondent does not have any rights or legitimate interests in the disputed Domain Name (see Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055, and Bayer Akiengesellschaft v. K Dango, WIPO Case No. D2002-0138).
Therefore, the Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In this case, the Complainants have evidenced that the trademark SOFITEL was a well-known trademark when the disputed domain name was registered (on August 30, 2007 the word “sofitel” was registered whereas the disputed domain name was registered on October 9, 2009). Given the fact that one of the Respondents is located in Australia and that the Complainants have developed commercial activity in that country (through more than 150 hotels), it is beyond any doubt that the Respondent had to be aware of the Complainants’ activities and of the Complainants’ well-known famous trademark SOFITEL. Moreover, the disputed domain name is confusingly similar with one of the hotels of the Complainants in Cartagena, Colombia, which circumstance cannot be considered as a matter of coincidence, but an intentional registration with the purpose of colliding with the Complainants’ activities or disrupting them.
On the other hand, evidence has been produced that proves that the disputed domain name leads to a parking page where a number of web sites are displayed offering links to hotels or services related with the same commercial area of interests as that of the Complainants.
Not to forget is the fact that the identification data of the Respondent was masked by a privacy shield. In normal circumstances this would not be considered per se an evidence of bad faith, but under the circumstances in the Panel’s opinion the Respondent’s goal with the use of this privacy technique has been to hide their real identity and to make it difficult to identify it. ( WIPO Case No. D2009-0571, Jay Leno v. St. Kitts Registry, Domain Names Administration).
In this regard, the Panel also takes into account the fact that the Respondent has not been known by the name “Sofitel” in the past, and the reputation of the SOFITEL trademark.
In the Expert’s view, by registering and using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site of the disputed domain name by creating a likelihood of confusion with the Complainants’ trademark “SOFITEL” as to the source of the web site in question and the products covered by the trademark “SOFITEL”. The use of the words “santa clara”, which are the name of one of the hotels of the Complainants’ hotels chain, is evidence enough that the Respondent’s intention was not a good one. Any consumer accessing the disputed domain name would certainly focus on the word “sofitel” and “santa clara”, if the user in question is searching for this hotel of the Complainants. This conclusion is reasonable in view of the evidence that has been filed with the case (see also Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600).
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <sofitelsantaclara.com> be transferred to the Complainant.
Dr. José Carlos Erdozain
Dated: March 15, 2012