WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Above.com Domain Privacy / Host Master - Transure Enterprise Ltd
Case No. D2012-1945
1. The Parties
Complainants are Accor and SoLuxury HMC, of Paris, France, represented by Dreyfus & Associés, France.
Respondents are Above.com Domain Privacy, of Beaumaris, Victoria, Australia; and Host Master - Transure Enterprise Ltd, of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sofitelsydney.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 19, 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 Respondents of the Complaint, and the proceedings commenced on October 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2012. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on November 16, 2012.
The Center appointed Junghye June Yeum as the sole panelist in this matter on November 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.
It has been necessary to this Panel to extend the decision’s due date as indicated under Section 7 of the Rules.
4. Factual Background
Complainants are Accor and its subsidiary SoLuxury HMC. Accor has been providing services in the hotel industry for over 45 years. It operates more than 4,200 hotels in 91 countries worldwide. The Accor group includes hotel chains such as Pullman, Novotel, Mercure and Ibis.
The Sofitel brand is the luxury trademark of Accor’s subsidiary SoLuxury HMC, established in 39 countries in Europe, Africa, the Middle East, the Asia Pacific and in North and South America. Accor operates 477 hotels in 20 countries in the Asia Pacific. It operates 166 hotels in Australia, among which 4 are Sofitel hotels. In particular, Accor operates 42 hotels in Sydney, among which the “Hotel Sofitel Sydney Wentworth” is included.
Complainants own the following International Trademark Registrations:
- SOFITEL, International Trademark No. 939096 dated August 30, 2007 protected in Australia and covering services in classes 35, 36, 43 and 44;
- SOFITEL, International Trademark No. 863332 dated August 26, 2005 protected in Australia and covering services in classes 35, 39 and 43.
Complainants operate domain names reflecting its trademark, including <sofitel.com>, which was registered on April 11, 1997 and <sofitel.org>, registered on April 30, 2001.
A WhoIs database search revealed that the disputed domain name <sofitelsydney.com> was registered by Respondents on June 29, 2012. The disputed domain name is linked to a parking page displaying sponsored links relating to travel and hotel websites.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainants contend that the domain name <sofitelsydney.com> is confusingly similar to Complainants’ SOFITEL trademark. The disputed domain name reproduces Complainants’ trademark in its entirety with the addition of the geographical term “sydney”.
According to Complainants, the mere addition of the geographical term “sydney” does not distinguish the disputed domain name. Rather, it is a direct reference to “Hotel Sofitel Sydney Wentworth” another hotel of Complainants’ which is located in Sydney.
Complainants argue that the disputed domain name creates a likelihood of confusion with Complainants’ trademark and misleads Internet users to believe there exist some association between the disputed domain name and the official Sofitel website.
For the abovementioned reasons, Complainants assert that the Complaint fulfills the requirement under paragraph 4(a)(i) of the Policy.
(ii) Rights or legitimate interests
Complainants contend that Respondents have no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, as well as paragraph 3(b)(ix)(2) of the Rules.
Complainants did not give Respondents any authorization to use or register their trademarks or seek registration of the disputed domain name. The webpage is being used as a parking page, and Complainants claim Respondents have no prior rights or legitimate interests in the disputed domain name.
Respondents are not commonly known by the name “Sofitel” in any way. Complainants claim that Respondent used a privacy shield service to hide its identity and prevent Complainants from contacting it for using the disputed domain name.
(iii) Registered and used in bad faith
Complainants contend that Respondents registered and are using the disputed domain name in bad faith pursuant to paragraphs 4(a)(iii) and 4(b) of the Policy, as well as paragraph 3(b)(ix)(3) of the Rules.
First, Complainants assert that it is not plausible that Respondents were unaware of Complainants when the disputed domain name was registered. Complainants assert that Respondents’ reproduction of the SOFITEL trademark in its entirety proves that Respondents were aware of the existence of Complainants’ reputation, trademarks and the hotels in Sydney.
Complainants content that even if Respondents had not known, a quick SOFITEL trademark search on the Internet would have revealed Complainants and their trademarks and furthermore a Google search would have showed Sofitel’s relationship to Complainants’ products or news regarding Complainants. Complainants allege that the failure to do a simple search is a contributory factor of bad faith.
Complainants further contend that the use of the disputed domain name to direct Internet users to a webpage displaying pay-per-click links to generate revenue constitutes use in bad faith.
Respondent, Above.com Domain Privacy, is an anonymous service, so Complainants did not send a cease-and-desist letter requesting Above.com Domain Privacy to communicate the registrant’s identity and contact details before commencing the present proceeding. For purposes of this decision, Respondents shall refer to, collectively, Above.com Domain Privacy, and Host Master, Transure Enterprise Ltd.
Respondents did not reply to Complainants’ contentions.
6. Discussion and Findings
6.1. Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed to by the parties, or the panel determines otherwise.
Here, the Panel renders its decision in English.
Pursuant to paragraph 4(a) of the Policy, Complainants have the burden of proof to establish that:
i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
ii) Respondents have no rights or legitimate interests in respect of the disputed domain name, and
iii) the disputed domain name was registered and is being used in bad faith.
Respondents have failed to respond or contest any of Complainant’s claims and this case is determined on the basis of information provided by Complainants.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <sofitelsydney.com> is identical or confusingly similar to Complainants’ trademark SOFITEL.
The Panel agrees that the simple addition of the geographic term “sydney” to Complainants’ trademark does not prevent confusion. Other UDRP panels have determined that the addition of a geographical term is insufficient to avoid confusion. See, e.g. Accor, SoLuxury HMC v. Private Registration, WhoisGuardService.com, WIPO Case No. D2011-2296; Accor Societe Anonyme v. Digi Real Estate Foundation WIPO Case No. D2006-1260; Accor v. Thawan Laungrungthip, WIPO Case No. D2006-0365; Accor v. Digi Real Estate Foundation, WIPO Case No. D2006-0651; and Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136.
The combination of Complainants’ trademark with the geographical term “sydney” creates confusion to Internet users who are searching for Sofitel hotels located in Sydney. The disputed domain name can be easily confused as being associated with Complainants to Internet users. The disputed domain name is more confusing in the present case because Complainants have a hotel incorporating the terms “Sofitel” and “Sydney” in its name, the “Hotel Sofitel Sydney Wentworth”.
B. Rights or Legitimate Interests
A determination of the rights or legitimate interests Respondents may have in the disputed domain name under paragraphs 3(b)(ix)(2) is based on whether there is any evidence that Respondents used or planned to use the disputed domain name to offer goods or services in good faith, whether Respondents are commonly known by the disputed domain name, regardless of trademark registration, and whether Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain by misleadingly diverting consumers or tarnishing the trademark or service mark at issue.
Respondents have no such rights or legitimate interests as described above. Respondents are not affiliated in any way with Complainants and Complainants have contended that they never authorized or licensed Respondents to use their trademark or to seek registration of any domain name incorporating the said trademark.
Respondents are using the disputed domain name to display a parking page displaying commercial links in the field of hotels, including links resolving to Complainants’ competitor websites shows that Respondents are well aware of Complainants. See, Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0217.
The Panel agrees with previous UDRP panels that the displayed links, used without authorization by Complainants, is an attempt to obtain commercial gain by attracting consumers that mistake the website to be associated to Complainants and an act of freeriding. See for example Accor v. Digi Real Estate Foundation, WIPO Case No. D2006-0651.
The Panel finds that Respondents have no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the use of a disputed domain name in bad faith by Respondents include the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or location, or of a product or service on Respondents’ website or location.
The use of the disputed domain name to display links to other hotels is indicative of the fact that Respondents are aware of Complainants use of its trademark in the hotel industry. The Panel agrees with previous decisions that the use of domain names including well-known trademarks with the mere addition of geographical terms in order to promote competing web pages should be considered an intentional attempt to attract, for commercial gain Internet users to the respondent’s website, or other online location, by creating a likelihood of confusion. See, Accor v. Thawan Laungrungthip, WIPO Case No. D2006-0365; Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636. Furthermore, the use of the disputed domain name tarnishes the reputation of Complainants and therefore is determined to be used in bad faith.
Also, the fact that Respondents have not responded to the Complaint also strengthens the case for bad faith use. See, e.g., Accor Societe Anonyme v. Digi Real Estate Foundation WIPO Case No. D2006-1260 and Accor v. Tigertail Partners, WIPO Case No. D2002-0625.
The Panel finds the paragraph 4(a)(iii) of the Policy has also been established.
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 name <sofitelsydney.com> be transferred to Complainants.
Junghye June Yeum
Date: January 18, 2013