WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR/ SoLuxury HMC v. FoodDiz
Case No. D2012-0140
1. The Parties
The Complainants are ACCOR and SoLuxury HMC both of Paris, France, represented by Dreyfus & associés, France.
The Respondent is FoodDiz of Dubai, United Arab Emirates, represented by Quest IP Intellectual Property Attorneys, India.
2. The Domain Names and Registrar
The disputed domain names <accorhotel.tel>, <ibis-hotels.tel> and <softel.tel> are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 26, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On January 26, 2012, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names 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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The Response was filed with the Center on February 18, 2012.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on February 28, 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.
On February 22, 2012, the Complainant made a supplemental filing of four pages containing “additional observations.in the light of the dense response of the Respondent.” A further filing on the same day contained eight annexes to these additional observations. On the same date, the Respondent requested the Center to have the opportunity to file a rebuttal to the additional observations in the event that the Panel decided to accept them.
Preliminary procedural ruling
In light of the Complainants’ supplementary filings of February 22, 2012, it is necessary for the Panel to determine at the outset whether it will accept them. In this regard, the Panel will proceed on the basis that, if it decides to accept them, it will provide the Respondent with an opportunity to provide a statement by way of rebuttal.
There is no specific provision made in the UDRP Rules for the making of supplementary filings, and this is therefore left to the discretion of the Panel, acting in accordance with its general powers under paragraph 10 of the Rules which says:
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
While the Panel is aware that there are a number of instances in which other panels have allowed supplementary filings, it is not inclined to exercise its discretion in this way in the present proceeding for the following reasons:
1. As paragraph 10(c) of the Rules indicates, there is an interest in UDRP proceedings being conducted “with due expedition” in accordance with the times fixed by the Rules. It is to be assumed that a complainant will put its best case forward in its initial filing and that it will stand or fall by that filing.
2. While a response may raise points or issues not considered in the complaint, it is the complainant’s responsibility as the party initiating the proceeding to have anticipated these points so far as possible at the outset in the formulation of its complaint. As a general rule, therefore, it should not be possible for a complainant (or for that matter, a respondent) to request an opportunity to meet and rebut each new point as it arises. This is not an iterative procedure as in an oral hearing: it is a streamlined online procedure that is intended to occur within strict time limits. Given that each successful request for a supplementary filing will need to be accompanied by a corresponding invitation to the other party to file a reply (in keeping with par 10(b) of the Rules), this could lead to significant delays before a final decision can be delivered by the panel.
3. Just as complainants should be held to the formulation of their initial complaint as filed, respondents should be held to the same standard. Accordingly, a response will stand or fall according to the way in which it meets the allegations of the complainant and, in particular, addresses the specific requirements of the Policy. Material that is irrelevant will be disregarded by the panel, and nothing is gained by a lengthy response that fails to deal with the requirements of the Policy.
4. In exceptional cases, there may be facts or events that have occurred subsequent to the filing of the complaint that will be relevant to the panel’s determination and where it will be appropriate for it to exercise its discretion to allow an additional filing and response. The present proceeding, however, does not appear to be one of these instances. Rather, a perusal of the Complainants’ additional observations indicates that it is concerned with meeting and rebutting the legal arguments presented by the Respondent, and there is nothing here specifically that points to any fresh fact or event that will be material to the Panel’s determination. To the extent that there are arguments concerning the particular nature of the “.tel” domain, the Panel is constrained by the terms of the UDRP Policy which applies to this domain.
Accordingly, the Panel now proceeds to determine the Complaint in accordance with the Complaint and Response as filed, and in accordance with the terms of the Policy.
4. Factual Background
The Complainants, respectively, are Accor and its wholly owned subsidiary SoLuxury HMC, both companies registered in France (Complaint, Annex 1). According to the Complaint, Accor is the “world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services.” It has been engaged in this “core business” for more than 40 years, with more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, ranging from “economy to upscale” (see further Complaint, Annex 6). The group operates a number of notable hotel chains, including “Pullman”, “Novotel”, “Mercure” and “Ibis”. In the case of “Ibis”, this has 814 centrally located budget hotels in 40 countries, offering “quality accommodation and services in all facilities, offering the best local value with one bedroom fully equipped and the security of a service 24h/7 and a wide variety of restaurants.” The IBIS chain has also received several ISO certifications for the professionalism of its staff and for its environmental commitment.
SOFITEL, which is operated by SoLuxury HMC, is established in 52 countries in Europe, Africa, the Middle East, Pacific Asia, and in North and South America. These are at the higher end of the luxury scale, and, according to the Complaint:
Because no country or town is like another, SOFITEL has made each of its hotels throughout the world a unique address. Associating the spirit of each place with standards of modernity, refinement, and absolute comfort, all combine in their own way with the inimitable French way of life.
There are websites associated with each of the names “Accor”, “IBIS” and “Sofitel” at “www.sofitel.com”, “www.accor.com” and “www.ibis.com” respectively, which enable Internet users readily to contact hotels, to book rooms and arrange other services (Complaint, Annexes 7 and 8).
According to the Complaint, there are 14 hotels operated by Accor in the United Arab Emirates, including 1 Sofitel hotel and 5 Ibis hotels (Complaint, Annex 9), this being the area where the Respondent lives. A further indication of the Complainants’ global reputation is to be seen in its receipt of the Tourism for Tomorrow Award 2010 from the world Travel and Tourism Council (WTTC) in 2010 with respect to the actions taken by the Accor group worldwide in support of sustainable tourism development (Complaint, Annex 10).
Apart from the domain registrations referred to above, Accor has several international trade mark registrations for the word “accor” and for IBIS with various devices and additional words, while SoLuxury has an international trade mark registration for the word “sofitel”. These provide protection in a wide number of countries and cover a range of relevant classes of goods and services. While the dates of the international registrations are relatively recent (2004 to 2011), each is based on earlier French registrations.
The Respondent has been the registrant of the disputed domain names since April 2, 2009 in the case of <accorhotel.tel>, April 2, 2009 in the case of <ibis-hotels.tel> and April 30, 2009 in the case of <softel.tel> (Complaint, Annex 3).
From June 2009, there have been intermittent communications between the parties, in which the Complainants have sought the transfer to them of the disputed domain names (see further Complaint, Annex 6). As no agreement has been reached, the Complainants have now initiated the present proceeding.
5. Parties’ Contentions
In relation to par 44(a)(i) of the Policy, the Complainants begins by referring to theirs various trade mark registrations for the words ACCOR, IBIS and SOFITEL (Annex 13) as well as their domain names reflecting these trade marks (Annex 7). They then note that the domain names <accorhotel.com> and <ibis-hotel.com> incorporate the trade marks ACCOR and IBIS entirely, and draw attention to a number of previous Panel decisions in which this has been held sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trade mark. They also note that there have been several prior Panel decisions in which the marks ACCOR and IBIS have been considered as well known, referring here to ACCOR v. JE Jeong; WIPO Case No. DCO2010-0040, Accor v. Maixueying Jokemine, WIPO Case No. D2010-2233 and, Accor S.A. v. Jacoop.org, WIPO Case No. D2007-1257 (Complaint, Annexes 14a and 14b).
In the case of the disputed domain name <softel.tel>, the Complainants argue that this is a case of typosquatting, in that it is only a slight alphabetical variation from the registered mark SOFITEL, and that this is insufficient to avoid confusion between the disputed domain name and the mark. More generally, they argue that the addition of the word “hotel” in the other two disputed domain names is insufficient to remove the possibility of confusion, given that this is a generic and descriptive term for the services provided by the Complainants. In the same way, they submit that the suffix .tel is to be disregarded for the purposes of showing identity or confusing similarity.
So far as the requirements of par 4(a)(ii) of the Policy are concerned, the Complainants argue that the Respondent has no rights or legitimate interests in the disputed domain names, noting that several of their trade mark registrations precede the registration of the domain names by a number of years. More generally, the Complainants assert that, by reason of the close identity of the disputed domain names to their marks, there can be no basis on which the Respondent could legitimately carry on any activity associated with those websites. More specifically, the Complainants argue that the Respondent has no authorization or permission from them to use the names ACCOR or IBIS. Somewhat more repetitively, the Complainants argue that the typosquatting activity of the Respondents in registering the disputed domain name <softel.com> is an indication of lack of rights and legitimate interests on the part of the Respondent; likewise, the addition of “hotel” in the case of the other two disputed domain names underlines the Respondent’s lack of rights or legitimate interests.
So far as par 4(a)(iii) of the Policy is concerned, the Complainants argue that the Respondent acted in bad faith in registering the disputed domain names, in that it must have had knowledge of the Complainants’ trade marks, in view of their world wide repute. They also argue that the addition of the words “hotel” and “hotels” prove awareness of the marks, and similarly in relation to the slight misspelling of SOFITEL. They assert further that any use of the disputed domain names will cause consumers to mistakenly believe that the websites linked to these domains are owned by the Complainants.
More generally, in relation to bad faith use of the disputed domain names (the second limb of par 4(a)(iii)), the Complainants argue that a likelihood of confusion and diversion of Internet traffic is to be presumed. However, as it does not appear that the disputed domain names are actually in use, the Complainants rely on the early Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003, as authority for the proposition that passive holding of the disputed domain names is still use in bad faith, pointing here again to the fact that the registration of the disputed domain names was not authorized by them, and the fact that the Respondents added the words “software” and “telecommunication” on the .tel website to which the disputed domain name <softel.com> resolves. They also argue that the Respondent sought to offer the disputed domain names to them at prices in excess of out-of-pocket costs, and that this is further proof of use in bad faith withtin the meaning of par 4(a)(iii).
In a detailed and lengthy Response, the Respondent vigorously denies each of the Complainant’s allegations. As with the Complaint, there is some repetition here, and some of the Respondent’s arguments recur under each of the sub-paragraphs of par 4(a) of the Policy.
The Respondent begins by providing some background on the .tel domain (Response, Annexes 1 and 2), as well as its own registration of various .tel domains and directories. While useful, the salient point to note is that the .tel domain names are subject to the same UDRP Policy as other top level domains, such as .com and .net, and that it is likewise a condition of registration that these domain names must submit to the arbitration procedures provided under the Policy. In particular, it does not appear that any special or particular provision has been made for registrations in this domain: in other words, the requirements of the Policy apply just as they do in any other proceeding. Notwithstanding this, the Respondent makes the general assertion that his directory building services within the .tel domain are completely legitimate, and that the Complainants’ allegations are “completely baseless and without any merit”’.
As to par 4(a)(i) of the Policy, the Respondent does not dispute that the Complainants may have rights in the trade marks ACCOR, IBIS and SOFITEL. However, it raises here two points: first, that the addresses on the registrations differ from those in Complaint, and, second, that two of registered trade marks (Nos 1079161 and 1097368) postdate the registration of the disputed domain names and cannot therefore be relied upon to establish the Complainants’ prior rights.
Having said this, the Respondent does not dispute that “the domains “accorhotel.tel” and “ibis-hotels.tel” will be considered confusingly similar to the trade marks ACCOR and IBIS respectively.” However, he “vehemently” denies this to be the case with respect to the trade mark SOFITEL, arguing that his use of “softel” in his domain name is a telescoping of the terms “software” and “telecommunications” and that the contracted word “softel” is in wide use in the electronics, information technology and communications industries. He also provides examples of a number of registered domain names that incorporate the word “softel” (see further Response, Annexes 6 and 7). On the basis of this evidence, he submits that it cannot be easily concluded that consumers will perceive “softel” as a typo for SOFITEL. In addition, he argues that the Complainant’s delay in taking action against him or inaction as regards other users of the word “softel” suggests that the Complainants themselves do not consider the word to be confusingly similar. Further, he argues that the Complainants have not produced any evidence from which it can be inferred that he registered the disputed domain name <softel.com> with the primary intention of typo-squatting or taking illegitimate advantage of the trade mark SOFITEL. More generally, the Respondent argues that the dissimilarity of meanings as between “softel” and SOFITEL should outweigh the similarities that may otherwise exist as to “appearance and sound”.
As to the requirements of par 4(a)(ii), again the Respondent “vehemently” denies that these have been met. In the case of the disputed domain name <softel.tel>, he submits that his rights and legitimate interests are demonstrated by the fact that this is a commonly used and accepted word associated with the IT field and that his use of it is not typo-squatting. In the cases of the disputed domain names <accorhotel.tel> and <ibis-hotel.tel>, he argues that these amount to “nominative fair use”, given that he registered the disputed domain names with the purpose of building a regional directory of ACCOR and IBIS hotels for easy access by users over their mobile phones and mobile platforms, and that his use of the marks here is a legitimate one which refers only to genuine ACCOR and IBIS hotels and makes no other use of the ACCOR and IBIS marks. In this regard, he refers to a number of United Sates of America court decisions and WIPO decisions in support (see Response, Annex 9).
As to the requirements of par 4(a)(iii), there is a further “vehement” denial by the Respondent that this is satisfied here. As to his reasons for registering the disputed domain names, the Respondent makes a number of arguments:
1. As argued under par 4(a)(ii), his reasons for doing so were legitimate and bona fide.
2. He did not register them so as to prevent the Complainants from registering domain names reflecting their trade marks, and only registered one domain for ACCOR and IBIS, rather than a number of other permutations and combinations (which could have indicated bad faith on his part). He also did not register a domain for SOFITEL because this is not as prominent in his region and he had no intention or interest in building a directory for SOFITEL hotels in the same way as he planned for ACCOR and IBIS.
3. He is not in competition with the Complainants.
4. He had no intention to profit from his registrations, arguing again that these were legitimate fair uses in any event and that no confusion to consumers was likely.
5. He had no intention of selling or renting the domain names either to the Complainants or any of their competitors.
As for use in bad faith, the Respondent repeats that his use of the <accorhotel.tel> and <ibis-hotel.tel> is non-commercial in nature and nominative fair use, with the intention of building directories and no possibility arising of a diversion of consumers. In the case of <softel.tel>, he repeats his argument that the Complainant scan have no rights here and that, in any event, his passive holding of it cannot lead to an inference of bad faith use. More generally, he repeats his arguments that the use of these domains for the purposes of building directories of hotels cannot divert custom from the Complainants, noting that these domains contain very limited content in any event, such as website links, phone numbers, emails etc that link to the Complainants’ hotels and no others. He also notes that the Complainants’ own .tel websites contain very limited information themselves.
The Respondent also refutes the Complainants’ allegation that he sought to sell the disputed domain names for money. The arguments here are quite detailed, but essentially he makes two points: first, that the sums involved were only intended to cover the cost of the Respondent’s legal advice and, secondly, that the Complainants delayed significantly in their responses and that the communications between the parties dragged on for more than two years before the initiation of the present proceeding.
All the above indicates, so the Respondent argues, that its registration and passive holding of the disputed domain names were not in bad faith.
6. Discussion and Findings
Each of the requirements in paragraph 4(a) needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainants must satisfy here: first, that they have “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainants have shown that theyy have rights in a number of registered trade marks that consist of, or contain, the words ACCOR, IBIS and SOFITEL. The question of address raised by the Respondent does not appear to be of any significance here, as the addresses given in the corporate information at Annex 1 of the Complaint and on the trade mark registrations in Annex 13 are the same. The Respondent’s comment concerning the date of registration of two of the marks also has no significance, as these are based on French registrations of an earlier date to the registrations of the disputed domain names. In any event, there is no mention in par 4(a)(i) of any requirement that that the registration dates of a Complainant’s trade mark should precede that of the registration of the disputed domains.
As to the second of the requirements of par 4(a)(i) (identity or confusing similarity), the Panel accepts that the Respondent’s admission of confusing similarity is correctly made in the case of the disputed domain names <accorhotel.tel> and <ibis-hotel.tel>. The principal elements of each domain name are the words “accor” and “ibis”, and these will be the words immediately keyed in by any customer in the online environment. The addition of the word “hotel” or “hotels” only add to the likelihood of confusion, given the sphere of the Complainants’ activities.
In the case of the disputed domain name <softel.tel>, the Panel is unpersuaded by the “vehement” arguments of the Respondent that the second limb of par 4(a)(i) is not satisfied here as well. Notwithstanding the fact that he presents an interesting argument as to the IT origins of the word “softel”, it is hard to escape the obvious consideration that internet users who are looking for SOFITEL hotels will just as readily key in “softel” by mistake, without any regard to the IT usage and will therefore be confused into thinking that this is the same as the Complainant’s trade mark. Furthermore, while the Respondent’s argument as to “meaning” overshadowing “appearance and sound” is an interesting (and novel) one, it would need an overwhelming preponderance of evidence (and much more than the Respondent has provided) to show that there is a widespread understanding and acceptance by consumers that “softel” always refers to “software” and “telecommuncations” rather than SOFITEL hotels. Without completely rejecting the possibility that there might be particular and special cases where such an argument might succeed, the Panel does not accept that the present is such a case. On the usual comparisons of sound and appearance, it is hard to escape the conclusion that the disputed domain name <softel.tel> is confusingly similar to the trade mark SOFITEL.
Accordingly, the Complainants have satisfied the requirements of par 4(a)(i).
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“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 [the Respondent’s] 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 a 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.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration, as they are often difficult for a Complainant to disprove directly. In the present case, there is nothing on the record to suggest that the circumstances referred to in either sub-paragraphs 4(c)((i) or (ii) are present. The main focus is therefore upon the matters referred to in sub-paragraph 4(c)(iii) and here it becomes critical to consider carefully the submissions of both Complainant and Respondent. So far as the Complainant’s position is concerned, the following may be stated:
(i) There is no doubt that the Respondent’s use of any of the disputed domain names has not been authorized or licensed by it.
(ii) Likewise, there can be little doubt that the Respondent was clearly aware of the Complainants’ ACCOR and IBIS marks at the time of registration of the disputed domain names <accorhotel.tel> and <ibis-hotels.tel> – his stated purpose of building directories linking to these hotels indicates his knowledge of the existence of the trade marks.
From the Respondent’s perspective, it is necessary to consider the disputed domain name <softel.tel> separately from the other two. Legitimate noncommercial or fair use of this domain name, on the basis that it is a well known contraction of the words “software” and “telecommunications” is difficult to accept, particularly when there is no suggestion by the Respondent that it was unaware of the existence of the SOFITEL mark at the time of registering the disputed domain names. Were such a suggestion is made, it would clearly lack credibility in view of the clear knowledge of the ACCOR and IBIS marks and the Respondent’s stated intention to build directories relating to these hotels. It is therefore hardly surprising that the Respondent has not put forward any such suggestion. Accordingly, its claim to “rights and legitimate interests” in the disputed domain name <softel.tel> must rest on the proposition that this is a well known and accepted contraction of the words “software” and “communications” such that use of the disputed domain name will be seen as such and nothing more – certainly nothing that will lead to confusion with the registered trade mark for hotels. As noted above in relation to par 4(a)(i), there is simply insufficient evidence adduced by the Respondent to show that this is the case. Furthermore, there is no evidence that the Respondent is actually using the disputed domain name <softel.tel> as a directory for software and telecommunications services at present. Accordingly, there is not enough here to satisfy the Panel that the Respondent comes within the scope of paragraph 4(c)(iii) of the Rules in the case of the disputed domain name <softel.tel>.
So far as the disputed domain names <accorhotel.tel> and <ibis-hotels.tel> are concerned, the Respondent’s claim that its uses here are “’nominative fair use” have more resonance, although care should be taken here to refer to the specific words of the Policy rather than concepts developed under particular national laws. In this regard, par 4(c)(iii) requires a respondent’s use to be a “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.” On the evidence before the Panel, it is difficult to accept that the Respondent’s use or intended use is, or will be, “non-commercial”, in that his intention is to compile directories that relate specifically to the Complainants’ hotels, which are clearly themselves operated for profit. It is hard to discern from the Respondent’s arguments any suggestion that its use of the disputed domains will fall within any of the generally accepted categories of legitimate non-commercial fair use, such as comparative advertising, criticism or review: none of these activities seems involved in the construction of directories which relate only to the hotels of the Complainants. Although not clear on the evidence before the Panel, it appears that the Respondent’s role will be that of a providing an intermediary platform that will link customers to the Complainants’ hotels. While such an activity may well be a “legitimate” one in the sense of benefiting or aiding consumers, there is no necessary reason why it should be “non-commercial” or, indeed, why the Respondent would not want to charge for it. In fact, it appears quintessentially to be one which the Complainants themselves would want to offer as it benefits only themselves and relates only to their business. Furthermore, as such directories would relate only to the Complainant’s hotels and hotel services, the fact that this service would be provided by an unrelated third party would be misleading in itself and, as an unauthorized activity, would be capable of tarnishing the Complainants’ marks by the simple fact that the usage would occur without its licence and outside its control. Accordingly, the Respondent’s arguments as to “nominative fair use” are not made out, and no specific support for them in this particular instance is to be found in any of the national and WIPO Panel decisions cited in support.
The Panel therefore concludes that then Complainant has satisfied the requirements of par 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To succeed under paragraph 4(a)(iii), the Complainants must show that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy then provides that 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 you [the Respondent] 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 [the Respondent] 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 [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] 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.”
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, there is nothing in the record to suggest that any of the circumstances referred to in paragraphs 4(b)((i) or (ii) arise. While there are allegations by the Complainant that the Respondent sought to sell the disputed domain names for a price in excess of its out-of-pocket costs, the evidence on this is equivocal at best, and not sufficient to meet the requirements of par 4(b)(i); in particular, there is nothing to suggest that this was the intention of the Respondent at the time of registration. A similar conclusion must follow in relation to the circumstances outlined in sub-pars 4(b)(iii) and (iv).
Nonetheless, the various scenarios listed in par 4(b) are inclusive, and do not exhaust the possibilities of other conduct falling within the general requirements of par 4(a)(iii) that the registration of the disputed domain names should have been effected, and that they should have been used, in bad faith. As regards the first of these requirements, it is difficult to escape the conclusion that the registration of each disputed domain name was made in bad faith. Thus, it is clear that the Respondent was aware of the Complainants’ ACCOR and IBIS marks at the time of registration of the disputed domain names <accorhotel.tel> and <ibis-hotels.tel>. His stated purpose of building directories linking to these hotels indicates his knowledge of the existence of the trade marks and why else would he have sought registration of these names? In the case of the disputed domain name <softel.tel>, a similar conclusion is justified: while the Respondent asserts that this was a contraction of the words “software” and “telecommunications”, it is difficult to accept that this was done in absence of knowledge of the Complainants SOFITEL mark, given also the contemporaneous registrations of the disputed domain names <accorhotel.tel> and <ibis-hoels.tel> with the express purpose of building directories relating to those hotels. It would therefore be naive to suggest that the Respondent was unaware of the connection between the various hotel chains operated by the Complainants, including the SOFITEL chain. Absent any right or legitimate interest of the kind referred to in par 4(c)(iii), the conclusion must be that the Respondent’s registration of the disputed domain names was made in bad faith.
Such a finding, however, is not enough for the purposes of paragraph 4(a)(iii) of the Rules: it must also be found that there has been subsequent use of the disputed domain names in bad faith. This is, perhaps, the most difficult part of the Complainant’s case, as it is not clear from the evidence filed that there has been any actual use of the disputed domains by the Respondent, although, as noted above, the latter has indicated its intentions of creating “directories” linking to the Complainants’ hotels in the case of the disputed domain names <accorhotel.tel> and <ibis-hotels.tel> while maintaining that the disputed domain name <softel.tel> relates to something quite different, namely software and telecommunciations. The Complainants, however, relies on the early Telstra v. Nuclear Marshmallows decision that holds that there can be use of a disputed domain name in bad faith where there has simply been a passive holding of same, but where any possible intended use can only be in bad faith with respect to the Complainant, for example, by giving rise to one of the circumstances referred to in par 4(b) and because the Respondent can only do so in full knowledge of the Complainants’ rights. This is exactly the situation in the present proceeding, given that, as found above, the Respondent cannot claim any right or legitimate interest in the disputed domain names. Accordingly, any future use of them by the Respondent can hardly be described as done in good faith, in that the Respondent will be clearly aware of the Complainant’s marks and any such use will inevitably cause confusion as to the Complainant’s association with the disputed domain names. Furthermore, even if it consists only of directories leading to the Complainant’s ACCOR and IBIS hotel chains, as noted above in relation to par 4(c)(iii), this will not fall within the scope of a non-commercial fair use. In the case of the disputed domain name <softel.tel>, notwithstanding the Respondent’s vehement and repeated contentions to the contrary, there will be a high risk of customer confusion where they key in “softel” by mistake when seeking SOFITEL, and it is difficult to see how any activation of this disputed domain name by the Respondent in the future could be otherwise than in bad faith.
The Panel therefore finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Rules .
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 names <accorhotel.tel> and <ibis-hotels.tel> be transferred to the Complainant and that the disputed domain name <softel.tel> be cancelled.
Dated: March 13, 2012