WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR , SoLuxury HMC v. Whois privacy services Domain protect LLC / Alex Gusev
Case No. D2012-0389
1. The Parties
The Complainants are ACCOR and SoLuxury HMC (hereinafter “the Complainant”), of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Whois privacy services Domain protect LLC / Alex Gusev of Saint-Petersburg, Russian Federation (“Russia”).
2. The Domain Names and Registrar
The disputed domain names <dorint-novotel.com> and <dorintsofitel.com> are registered with MISTERNIC LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 28, 2012 and March 2, 2012, the Center transmitted by email to MISTERNIC LLC a request for registrar verification in connection with the disputed domain names. On March 2, 2012, MISTERNIC LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 2, 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 March 7, 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 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2012.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on April 5, 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a leading hotel operator and a market leader in Europe for the provision of luxury and mid-range hospitality and accommodation services.
4.2 As of 2012, the Complainant operates more than 4,200 hotels (with a combined 530,000 rooms) with a presence in 90 countries worldwide. The Complainant group includes notable hotel chains such as Pullman, Novotel, Mercure, Sofitel and Ibis. The Complainant enjoys worldwide recognition for needs-tailored hotel services and service quality.
4.3 The Complainant group’s consolidated revenue for 2010 was EUR 5.948 billion and it employs more than 145,000 employees worldwide.
4.4 Among its various hotel chains, the Complainant markets its Sofitel chain as a “luxury” brand hotel, while its Novotel chain is marketed as a “midscale” brand hotel.
4.5 The Complainant is the registered owner of trademarks consisting or including the words “sofitel” and “novotel” in the United States of America (“United States”), Russia and across the world, notably:-
- SOFITEL United States nominative trademark No. 939096, dated August 30, 2007 in classes 35, 36, 43 and 44.
- SOFITEL Russian nominative trademark No.863332, dated August 26, 2005 in classes 35, 39, and 43.
- NOVOTEL International nominative trademark No.785645, dated June 25, 2002 in class 43
- NOVOTEL Russian nominative trademark No. 767863 dated August 21, 2001 in class 38
4.6 The Complainant owns, among others, domain names using its SOFITEL and NOVOTEL trademarks, through which it enables its customers to find and book hotel rooms and to benefit from such services as advertised on those websites. These domain names include:
- <sofitel.com> registered on April 11, 1997
- <sofitel.org> registered on April 30, 2001
- <novotel.com> registered on April 10, 1997
- <novotel.org> registered on April 19, 2002
4.7 In 2002, the Complainant group acquired a controlling stake in a German company, Dorint AG, which operated 87 hotels (with a combined 15,257 rooms) in Germany. In 2003, the Complainant’s and Dorint AG’s hotels under the acquisition were co-branded and consequently, some of these hotels bore the trademarks DORINT SOFITEL and DORINT NOVOTEL. In 2007, the Complainant further rebranded these hotels as SOFITEL and NOVOTEL.
4.8 The Complainant became aware that the domain names <dorintsofitel.com> and <dorint-novotel.com> have been registered despite there no longer being hotels bearing the trademark or name DORINT SOFITEL or DORINT NOVOTEL. WhoIs database searches have revealed to the Complainant that the disputed domain names were registered by the Respondent.
4.9 The disputed domain names redirect to a page displaying sponsored links related to hotels and state that the disputed domain names are for sale.
5. Parties’ Contentions
5.1 The Complainant contends that it has rights to the SOFITEL and NOVOTEL trademarks and that the disputed domain names <dorint-novotel.com> and <dorintsofitel.com> are identical or confusingly similar to the Complainant’s SOFITEL and NOVOTEL trademarks. The disputed domain names comprise and reproduce the Complainant’s trademarks in their entirety. In the case of <dorint-novotel.com>, the Complainant contends that the mere adjunction of a hyphen in the domain name “does not lessen the risk of confusion”, and to the contrary, may heighten the risk of confusion.
5.2 The Complainant contends that the adjunction of a competitor trademark (here, DORINT) increases the risk of confusion. The Complainant contends that both it and Dorint perform similar services and in shared markets, and that the inclusion of a third-party’s mark:
(a) does not create a distinct mark or domain name, capable of overcoming a claim of confusing similarity but adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the mark or domain name; and
(b) does not alter the visual impression of the disputed domain name being associated with the Complainant’s trademarks.
5.3 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent is not in any way affiliated to the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek the registration of any domain name incorporating the said trademarks;
(b) the Respondent has no prior rights or legitimate interest in the disputed domain names, since the registration of the SOFITEL and NOVOTEL trademarks preceded the registration of the disputed domain names by several years;
(c) the disputed domain names are so similar to the well-known SOFITEL and NOVOTEL trademarks that the Respondent cannot reasonably claim it intended to perform legitimate activities through the disputed domain names;
(d) the Respondent is not currently nor has ever been known by the names “Sofitel” or “Novotel”
(e) the Respondent did not demonstrate that the disputed domain names were used in connection with a bona fide offer of services, but rather the disputed domain names redirect to a holding page displaying sponsored links; and
(f) the Respondent did not respond to the various cease-and-desist letters and reminders by the Complainant, indicating through its inaction that the Respondent has no rights or legitimate interest in the disputed domain names.
5.4 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(a) It is implausible that the Respondent was unaware of the Complainant (and thus the Respondent acted in bad faith when it registered the disputed domain names) since:
(i) The Complainants are well-known in the industry and throughout the world (in particular in the United States and Russia where the Respondent is located and where the Complainant operates more than 1,000 hotels);
(ii) Various other UDRP panels have previously held the Complainant’s SOFITEL and NOVOTEL trademarks to be well-known worldwide.
(b) A trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks, or, failing which, a simply search via a search engine would similarly indicate that all first results for SOFITEL and NOVOTEL relate to the Complainant’s products or services.
(c) The Respondent registered the disputed domain names solely for the purposes of commercially benefitting from Internet traffic diverting to the websites of sponsored links. The diversion of Internet traffic from the Complainant’s sites to the Respondent’s sites through the misuse of well-known trademarks cannot be regarded as fair use or use in good faith, and may be harmful to the Complainant’s rights and legitimate business interests.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
6.1 Identical or Confusingly Similar
(a) The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademarks SOFITEL and NOVOTEL. The trademarks are not only registered by the Complainants in numerous jurisdictions but it has also been used extensively by the Complainants and its group of companies worldwide.
(b) The disputed domain names comprise the Complainant’s SOFITEL and NOVOTEL trademarks in their entirety with the additional word “dorint”. This additional word is also the undisputed trademark of a German company (not part of this proceeding) with which the Complainant formerly had business relations (and is now a competitor). The Panel cites with agreement the decision in Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 which held that the inclusion of a third party’s trademark in a disputed domain name does not alter the visual impression that the disputed domain name is associated with the complainant’s trademark.
(c) The Panel is also satisfied that the insertion of a hyphen in the disputed domain name <dorint-novotel.com> is non-distinctive and does not reduce or diminish the similarity of the disputed domain name in question to the Complainant’s NOVOTEL trademark (see National Football League v. Online Marketing International also known as International Marketing Group, WIPO Case No. D2008-2006, and Nokia Group. v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782)
As such the Panel finds that the disputed domain names are confusingly similar to the Complainant's SOFITEL and NOVOTEL trademarks for the purpose of the Policy.
6.2 Rights or Legitimate Interests in the Disputed Domain Names
(a) The Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain names. There is also no evidence to indicate that the Respondent is or was ever known by the names “Sofitel” or “Novotel” (or derivatives therefrom).
(b) The Complainant has adduced sufficient evidence that the disputed domain names are being used solely for commercial gain. The websites located at <dorint-novotel.com> and <dorintsofitel.com> indicate that the Respondent is using the websites solely to divert Internet traffic to the Respondent’s site for commercial gain through the use of domain names which are confusingly similar to the Complainant’s trademarks.
(c) It is uncontested that the Complainant has neither licensed nor authorized the Respondent in any way to use the SOFITEL or NOVOTEL trademarks (or their variations in whatever form). It is also uncontested that the Respondent is in no way affiliated with the Complainant, and as such the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. (See Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261).
(d) In the absence of evidence to the contrary, the Panel accepts as true the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent seeks to attract Internet users by misusing the Complainant’s trademarks for its own commercial purposes. The Panel also accepts that there is no evidence that the Respondent has ever used the disputed domain names in a legitimate manner or that it has any other legal right in either the SOFITEL or NOVOTEL marks.
(e) The Panel is satisfied that the Complainant’s trademarks were registered long before the disputed domain names were registered, and are used extensively worldwide, while the only use of the disputed domain name by the Respondent, rather than any good faith offer of goods or services, was by generating revenue through pay-per-hit links, and that there is no believable grounds from which this Panel can infer a legitimate purpose or interest (see Drexel University v. David Brouda, WIPO Case No. D2001-0067; Accor, SoLuxury HMC v. YunSung, WIPO Case No. D2010-2198; Accor S.A. v. Peter Mason, WIPO Case No. D2008-0957; Accor, SoLuxury HMC v. PrivacyProtec.org, n/a Ian Harding, WIPO Case No. D2011-0863).
(f) The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could find not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain names.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3 Registered and Used in Bad Faith
(a) The Complainant has asserted without rebuttal from the Respondent that its rights in the SOFITEL and NOVOTEL marks are well established, and this Panel cannot conclude that the Respondent could have registered the disputed domain names innocently, or otherwise without knowledge of the Complainant’s trademarks. This is especially obvious given the fact that the disputed domain names resolved to websites containing pay-per-hit links to other hotel operators.
(b) This Panel accepts that the Respondent had used the disputed domain names to attract Internet users for commercial gain through the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s website contains links to websites that contain sponsored advertisement banners and to various websites advertising services similar to the Complainant’s. It is likely that these sponsored banners and links enable the Respondent to earn a commission whenever an Internet user visits the website and clicks on one of the sponsored links. This has been held to be conduct amounting to bad faith by various UDRP panels (see Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc. WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383).
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
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 names <dorint-novotel.com> and <dorintsofitel.com> be cancelled.
Syed Naqiz Shahabuddin
Dated: April 18, 2012