WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. VB
Case No. D2012-0057
1. The Parties
The Complainants are Accor and SoLuxury HMC, both of Paris, France, represented by Dreyfus & associés, France.
The Respondent is VB of Washington, Vietnam.
2. The Domain Name and Registrar
The disputed domain name <sofitelsaigon.com> is registered with Wild West Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 16, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On January 16, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. The Response was filed with the Center on February 8, 2012. This consisted of an email communication to the Center from a Mr. Nguyen, Managing Director of ROWI Prazisionstechnik GmbH of Pforzheim, Germany. On February 8, 2012, the Center received a second email from Mr. Nguyen, this time in German and addressed to “Volker”. On February 9, 2012, the Center suggested a suspension to the Complainants in order for the Parties to try and find a settlement arrangement. On February 13, 2012, the Complainants requested a suspension. On March 5, 2012, the Complainants requested the re-institution of the proceedings.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 12, 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 second Complainant, SoLuxury HMC, is a subsidiary of the first Complainant, Accor.
The first Complainant is a major player in economic and mid-scale hotels, as well as in upscale and luxury hospitality services. It has been in the industry for over 40 years and operates over 4,200 hotels in 90 countries. It includes the hotel chains Pullman, Novotel, Mercure and Ibis. The first Complainant owns, amongst others, the domain names <accor.com>, <grandmercure.com>, and <novotel.com> and uses the websites to which these domain names resolve to communicate with customers.
The second Complainant is the luxury subsidiary of the first Complainant and is established in 52 countries in Europe, Africa, the Middle East, Asia Pacific, and North and South America. The second Complainant owns the domain name <sofitel.com> and Internet users can find and book hotels through the website to which this resolves.
The first Complainant operates many hotels in Vietnam, and the second Complainant operates the Hotel Sofitel Saigon Plaza in Vietnam.
The second Complainant owns many SOFITEL trademark registrations around the world, including in Vietnam. The trademark SOFITEL was registered in the United States of America on October 17, 2006, and in Vietnam on August 30, 2007.
The disputed domain name was registered on April 27, 2009. The Complainants have provided screen shots showing that the disputed domain name originally redirected Internet users to a website which displayed hyperlinks of hotels owned by third parties. As a result, the Complainants sent a cease and desist letter and email to the Respondent on June 2, 2009, seeking an amicable transfer of the disputed domain name to the Complainants. These were sent to all contacts listed on the WhoIs page. Reminders were sent on June 10, 2009, and on June 23, 2009.
A reply was sent from the email address of the administration and technical contacts listed on the WhoIs page for the disputed domain name on July 2, 2009, contending that Sofitel was the acronym for “Secured Of Financial Infrastructure Telecommunication” and requesting a payment of between USD10,000-15,000 to secure the transfer of the disputed domain name.
The Complainants have provided evidence that the website to which the disputed domain name resolves changed following the first cease and desist letter, and redirected Internet users to a website of a Cambodian review on Economics which is distributed at various locations including the Sofitel Royal Angkor Hotel. The disputed domain name currently redirects Internet users to a website that appears to be owned by the Company QB I.A.C Co. Ltd., which is a Vietnamese company that provides services in connection with events such as conferences and meetings. The website also redirects Internet users to hotels in Vietnam and to the Hotel Sofitel Plaza Saigon which is owned by the second Complainant.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical or at least confusingly similar to the second Complainant’s SOFITEL trademark because it reproduces it in its entirety. The association of the geographical term “Saigon” reinforces the likelihood of confusion because the disputed domain name refers to a hotel operated by the second Complainant in Vietnam, namely the Hotel Sofitel Saigon Plaza. The adding of a geographical term is insufficient to give any distinctiveness to the disputed domain name. If Internet users enter the keywords “Sofitel Saigon” into the search engine on the website to which the disputed domain name resolves they are redirected to a page which describes the Hotel Sofitel Saigon Plaza and other descriptions of hotels owned by competitors. This is highly confusing for consumers who will be prone to believe that there is a link between the Complainants’ hotels and the Respondent. Furthermore, the addition of the gTLD suffix “.com” does not affect the likelihood of confusion merely because it is necessary for the registration of the domain name itself.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it is not in any way affiliated with the Complainants or authorized or licensed to use the Complainants’ trademark, or to seek registration of any domain name incorporating its trademark; (ii) the registration of the SOFITEL trademark preceded the registration of the disputed domain name and the Respondent has no prior rights or legitimate interest in the disputed domain name; (iii) the disputed domain name is so similar to the well-known SOFITEL trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name; (iv) the Respondent is not commonly known by the name “sofitel”; and (v) the Respondent did not demonstrate, before receiving any notice of the dispute, use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of services, and in fact it used the disputed domain name to resolve to a parking page displaying sponsored links related to hotels owned by third parties.
The Complainants make many contentions that the Respondent registered and is using the disputed domain name in bad faith including: (i) it is implausible that the Respondent was unaware of the Complainants when it registered the disputed domain name because the SOFITEL trademark is well-known throughout the world and the Complainants operate a number of hotels in Vietnam including the Hotel Sofitel Saigon Plaza;
(ii) the use of the disputed domain name suggests that the Respondent was perfectly aware of the Complainants and their trademark because, prior to the cease and desist letter, the disputed domain name resolved to a website consisting of parking pages displaying sponsored links relating to hotels; (iii) given the absence of any license or permission from the Complainants to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be claimed; (iv) the fact that the Respondent sent a letter proposing an amount ranging from USD10,000-15,000 in exchange for the transfer of the disputed domain name evidences bad faith; (v) the assertion by the Respondent that SOFITEL is an acronym for “Secured Of Financial Infrastructure Telecommunication” is not credible as the activities of the Respondent are far from being related to finance or telecommunications; and (vi) it is more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainants’ trademark rights through the creation of initial interest confusion.
On February 8, 2010, an email was transmitted to the Center by a Mr. Nguyen, Managing Director of ROWI. Mr. Nguyen contends he had bought “our business out of bankruptcy in August 2010” and that with it he had acquired all intellectual property and domains. He contends that “the former owner tried to attack us by still using our company name for the ordering of services, just to damage us.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainants’ trademark SOFITEL, and adds the descriptive word “saigon”. The addition of the word “saigon” does not lessen the inevitable confusion of the domain name with the Complainants’ trademark. This is especially so given that the second Complainant operates a hotel in Saigon under the SOFITEL trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and does not appear to have any association with a legitimate business that has a connection with the words “sofitel” and “saigon”. The disputed domain name was registered some years after the second Complainant registered the SOFITEL trademark for use in relation to the Complainants’ hotel services business. The Respondent’s assertion that SOFITEL is allegedly an acronym for “Secured Of Financial Infrastructure Telecommunication” is, in the view of this Panel, highly fanciful as no evidence has been provided to support this. The websites to which the disputed domain name have resolved have included a parking page website with links to various other sites, including hotels of the Complainants and their competitors, and unrelated businesses. According to the present record it appears that the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The evidence on the record provided by the Complainants with respect to the use of its SOFITEL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that the Respondent most likely knew of the Complainants’ trademark at the time of registration of the disputed domain name and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainants with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. In addition, the Respondent has indicated it is willing to sell the disputed domain name to the Complainant for between USD10,000-15,000, a figure far above the Respondent’s out-of-pocket expenses. Accordingly, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
For all 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, <sofitelsaigon.com>, be transferred to the second Complainant.
Andrew F. Christie
Dated: March 26, 2012