WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Vicky Mar Fashions Pty Ltd / Vicky Syrios
Case No. D2012-0090
1. The Parties
The Complainants are Accor and SoLuxury HMC of Paris, France represented by Dreyfus & associés, France.
The Respondent is Vicky Mar Fashions Pty Ltd / Vicky Syrios of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <sofitelwebfinder.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 January 19, 2012. On January 19, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 21, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. An informal email Response from the Respondent was filed with the Center on January 27, 2012.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on February 23, 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
Accor has been for more than 40 years one of the leading 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 well-known trademarks such as PULLMAN, NOVOTEL, MERCURE and IBIS.
Accor has registered the domain names <sofitel.com> and <sofitel.org>.
SOFITEL is the luxury trademark of the Accor’s subsidiary SoLuxury HMC, which is established in more than 50 countries throughout Europe, Africa, the Middle East, Asia Pacific and North and South America.
Complainants use the web 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 received the Tourism for Tomorrow Award in 2010, one of the most important awards in the world in the field of tourism.
The disputed domain name is not active.
Complainants have sent Respondent a cease and desist letter requesting the transfer of the disputed domain name.
The disputed domain name was registered on June 2, 2008.
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 is valid and in force.
5. Parties’ Contentions
Complainants contend that SOFITEL trademarks are well-known worldwide.
That they operate 157 hotels in Australia where Respondent is living.
That the disputed domain name is identical to Complainants’ trademark SOFITEL. The disputed domain name features the generic terms “web” and “finder”, which are added to the trademark.
That Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent is not affiliated with Complainants, nor have Complainants authorized or licensed Respondent to use their trademarks.
That 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.
That the disputed domain name was registered and is being used in bad faith by Respondent. In this respect, Complainants contend that in view of the reputation of Complainants, Respondent not only was aware of the existence of Complainants’ trademarks, but also is inactive. All these facts evidence that Respondent registered and uses the disputed domain name in bad faith.
As it was in receipt of the Complaint, Respondent sent an email to the Center on January 27, 2012, stating that it did not own the disputed domain name. Respondent admits to have registered the disputed domain name in good faith in 2008, but it has not used it ever since.
6. Discussion and Findings
The Panel renders his decision in view of the Policy.
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 Complainants’ trademarks.
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.
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 hotels and tourism.
A significant number of UDRP decisions regarding the requirement of identity or confusing similarity have been produced. In the Panel’s opinion, in accordance with previous UDRP decisions, a domain name used by a respondent may be considered identical with a complainant’s mark if the former reproduces without any modification or addition all the elements constituting the trade mark 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. In addition, the disputed domain name includes descriptive terms, specifically “web” and “finder”. Taken as a whole, the disputed domain name does not gain any distinctiveness with these words. On the contrary, SOFITEL is the trademark that really distinguishes the disputed domain name due to the fact that it incorporates a distinctive character, and is not referred to as a generic or descriptive term. Likewise, due to the activities of Complainants, the Panel considers that the word “Sofitel” may likely be associated with the field of hotels and constitutes a well-known trademark according to what is commonly accepted under this term. Consequently, anyone accessing the disputed domain name would certainly consider that the disputed domain name is related to some extent to Complainants.
The Panel comes to the conclusion that the words “web” and “finder” that are added to the disputed domain name are irrelevant to produce a significant difference for a medium type consumer of the product offered by Complainants (i.e. hotels and tourism facilities and services), that is, covered by the trademark SOFITEL. It is the Panel’s consideration that by having access to the disputed domain name, any consumer could be confused as to the commercial source of the product or as to whether or not Complainants and Respondent are somehow linked.
Taking into consideration the above, and the UDRP decisions rendered in similar cases, the Panel concludes that the disputed domain name is confusingly similar with the trademark of Complainants.
The Panel finds that 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
In this case, Respondent has not filed any formal response to the Complaint.
The Panel does not consider the email dated January 27, 2012, sent by Respondent to the Center, as a formal response. In any case, Respondent has not filed any evidence of any rights or legitimate interests in the disputed domain name.
Complainants allege that Respondent has never been licensed to use the trademark SOFITEL, and that it is not affiliated with Complainants whatsoever. Moreover, Respondent has never been known by the disputed domain name.
Respondent has not met the burden of proof in relation to any of the circumstances listed above, namely Paragraph 4(c)(i), (ii) and (iii). In this regard, the Panel concludes that 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 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 require 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 website 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 website or location or of a product or service on your website or location.”
In this case, Complainants have evidenced that the trademark SOFITEL was a well-known trademark when the disputed domain name was registered (the word “Sofitel” was registered on August 30, 2007 whereas the disputed domain name was registered on June 2, 2008). Given the fact that Respondent is located in Australia and that Complainants have developed commercial activities in that country (through more than 150 hotels), it is beyond any doubt that Respondent had to be aware of Complainants’ activities and of Complainants’ worldwide famous trademark SOFITEL. Moreover, Complainants are also associated with well-known trademarks such PULLMAN, NOVOTEL and IBIS.
The disputed domain name is inactive. In fact, the website includes links to services such as free-downloading of films, links to dating websites or search engines (e.g. www.ask.com”) just to mention a few. The passive use of a domain name may be taken into consideration to conclude that it was registered and is being used in bad faith (Telstra Corporation Limited. v. Nuclear Marshmallows WIPO Case No. D2000-0003). In this regard, the Panel also takes into account the fact that Respondent has not been known by the name “Sofitel” in the past, and the reputation of the SOFITEL trademark. Finally, Respondent sent an email on January 27, 2012 to the Center where it recognized that it registered the disputed domain name in good faith in 2008. Respondent states that it has not used the disputed domain name ever since. The Panel considers this assertion as evidence that Respondent was not only aware of the activities of Complainants, but also that the disputed domain name has been inactive for many years.
In the Panel’s view, by registering and using the disputed domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web sites of the disputed domain name by creating a likelihood of confusion with Complainants’ trademark SOFITEL as to the source of the web sites in question and the product covered by the trademark SOFITEL. The generic words “web” and “finder” or “webfinder” do not have any distinctiveness by themselves. In fact, any consumer accessing the disputed domain name would certainly focus on the word “Sofitel”. 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 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 <sofitelwebfinder.com> be transferred to the Complainant.
Dr. José Carlos Erdozain
Dated: March 8, 2012