WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Above.com Domain Privacy / Transure Enterprise Ltd.
Case No. D2012-0380
1. The Parties
The Complainants are Accor and SoLuxury HMC both of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kindgom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sofiteltower.com> (the "Domain Name") is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2012. On February 27, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Domain Name. On February 28, 2012, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2012 providing the registrant and contact information disclosed by Above.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 2, 2012.
The Center verified that the Complaint together with 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 March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.
The Center appointed Ian Lowe as the sole panelist in this matter on April 2, 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 Complainant Accor is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. Accor has been in business for over 40 years and operates more than 4,200 hotels in 90 countries worldwide. The group includes notable hotel chains such as Pullman, Novotel, Mercure and Ibis
SOFITEL is the luxury trademark of SoLuxury HMC, a subsidiary of Accor, and is established in 52 countries in Europe, Africa, the Middle East and Pacific Asia and in North and South America. SoLuxury HMC owns the website “www.sofitel.com” through which Internet users can quickly and easily find and book hotels. Accor operates many hotels in Australia where four of its 157 hotels operate under the Sofitel name. Accor also operates 1,071 hotels in the United States of America of which eight are branded Sofitel, including the Sofitel Chicago Water Tower.
SoLuxury HMC owns a large number of SOFITEL trademark registrations across the world including International trademark number 939096 designating among others Australia, and Australian trademark number 1207672, both in respect of the stylized word mark SOFITEL and registered as of August 30, 2007 in classes 35, 36, 43 and 44.
According to the WhoIs record annexed to the Complaint, the Domain Name was registered on July 25, 2011. At the time of the Complaint, the Domain Name resolved to a parking page displaying sponsored links related to hotels including those of the Complainant's competitors. The Respondent did not respond to a cease and desist letter from the Complainant despite several email reminders.
5. Parties’ Contentions
A summary of the contentions made by the Complainant is as follows.
After the original Complaint was filed, the true identity of the registrant was revealed as Transure Enterprise Ltd ("Transure"). The Complainant has established that the domain name used by Transure for its email service is registered by Trelllian, which in turn provides the domain parking and privacy shield service operated under the brand name Above.com. There therefore appears to be a link between Transure and Above.com suggesting that Trellian uses Transure as a domainer.
The Complainant relies on clearly established rights in the well-known trademark SOFITEL resulting from numerous trademark registrations around the world and widespread use. The addition of the word "tower" to the Domain Name in fact enhances the risk of confusion with the Complainant's mark because of the association with the Sofitel Chicago Tower hotel in the United States of America and with any other Sofitel hotel built in the shape of a tower.
The Complainant states that the Respondent cannot possibly have had any legitimate reason to register the Domain Name. It has no affiliation with the Complainant and no authority to use the SOFITEL mark. The Respondent has not made any attempt to use the Domain Name for a bona fide offering of services: on the contrary, the Domain Name resolves to a parking page displaying links in English and in French to hotels. Furthermore, the Respondent did not respond at all to the Complainant's cease and desist letter.
The Complainant points to the fact that a number of previous panels have found that the SOFITEL mark is well-known worldwide and that Sofitel hotels have a worldwide reputation. In the circumstances, the Respondent must have been aware of the Complainant's rights in the mark SOFITEL at the time of registration of the Domain Name. The Respondent's use of the Domain Name, incorporating the SOFITEL trademark in its entirety, for a parking page with pay per click links proves that the Respondent must have been aware of the existence of the Complainant's trademark and activity and suggests bad faith registration of the Domain Name.
The Respondent's use of the Domain Name for a parking page with such links also amounts to bad faith use of the Domain Name. The Complainant considers that many Internet users attempting to visit the Complainant's website will have ended up on the parking page and that the Respondent is thereby taking unfair advantage of the Complainant's trademark to generate profit. The confusing similarity between the Domain Name and the Complainant's trademark will inevitably have resulted in Internet traffic being diverted from the Complainant's website to the Respondent's.
Finally, the Complainant points to the use by Transure of a privacy shield to mask its identity (which is at least indicative of bad faith) and the fact that Above.com Domain Privacy and/or Transure have been the subject of over 70 successful UDRP complaints since 2008.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has well-established, uncontroverted rights in the trademark SOFITEL in a number of territories including Australia. Ignoring the suffix “.com”, the Domain Name differs from the Complainant’s mark only by the addition of the word "tower". That is not sufficient to distinguish the Domain Name from the Complainant’s mark. Indeed, because of the possible association of the word "tower" with the Complainant's Sofitel Chicago Tower hotel, or any other of its Sofitel hotels built in the shape of a tower, the additional component of the Domain Name increases the confusing similarity with the Complainant's mark.
The Panel accordingly finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent had some justification for registering the Domain Name it would have been expected to come forward with an explanation. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.
The Respondent has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Panel can think of no reason why the Respondent registered the Domain Name other than to take advantage of the Complainant's rights in the SOFITEL name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In the Panel's view it is highly likely that the Respondent had the Complainant's mark in mind when it registered the Domain Name. The obvious conclusion is that the Respondent registered and has used the Domain Name to operate a website with the intention that Internet users would be confused into believing that it was operated by or with the consent of the Complainant or was authorised by or associated with the Complainant. The Respondent's exploitation of the Complainant's mark with a view to commercial gain through sponsored links is evidence of bad faith registration and use for the purposes of the Policy.
In the circumstances the Panel finds that the 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 Domain Name <sofiteltower.com> be cancelled.
Dated: April 15, 2012