WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email
Case No. D2014-1650
1. The Parties
The Complainant is Accor, SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Giovanni Laporta, Yoyo.email, of Traverse City, Michigan, United States of America ("United States"), represented by Traverse Legal, PLC, United States.
2. The Domain Name and Registrar
The disputed domain name <sofitel.email> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, the Registrar 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 September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Response was filed with the Center on October 15, 2014. On October 23 2014 the Complainant made a supplementary filing. On November 6, 2014 the Respondent made a supplementary filing.
The Center appointed Alistair Payne as the sole panelist in this matter on October 21, 2014. 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 operates 3,600 hotels in 92 countries and its fully owned subsidiary, SoLuxury HMC, the other Complainant, operates the luxury SOFITEL brand of hotels on five continents, in approximately 40 countries and at 120 locations; (collectively referred to as the "Complainants"). The Complainants own numerous trade mark registrations worldwide for the word mark SOFITEL, including registration 00001301911 in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") dating from 1990 and registration number 939096 in the United States dating from 2007. The Complainants also own various domain names incorporating the SOFITEL mark, which resolve to a website for its SOFITEL hotels at <www.sofitel.com>.
The Respondent registered the disputed domain name on April 4, 2014.
5. Parties' Contentions
The Complainants submit that they are the owners of registered trade mark rights in the SOFITEL word mark as set out above and that through use worldwide in relation to its hotel chain under this brand and in relation to a wide variety of goods and services the mark has become well known and that members of the public would draw a connection between the Complainants and goods or services marketed under the SOFITEL brand.
They further submit that as the disputed domain name wholly incorporates the SOFITEL mark and in light of the renown attaching to their mark that people seeing the disputed domain name would assume that it was connected with the Complainants. They note that even if the generic Top-Level Domain ("gTLD") element of the disputed domain name is to be taken into regard, people would assume that it refers or has a connection to email or other correspondence made by the Complainants. They also say that the disputed domain name is virtually identical to the Complainants' <sofitel.com> domain name which only serves to heighten the likelihood of confusion.
The Complainants submit that the Respondent has not been authorised by them to use the disputed domain name and has no affiliation with them. They say that the Respondent is not commonly known by the disputed domain name and has not made any reasonable or demonstrable steps to use the disputed domain name in relation to any bona fide activity. The Complainants note in this regard that the disputed domain name resolves to a blank page. Furthermore the Complainants assert that the Respondent does not demonstrate any noncommercial or fair use of the disputed domain name.
Further the Complainants note the various prior UDRP decisions in which the Respondent has similarly registered very well-known marks in other gTLD spaces and has attempted to argue that in those cases he was also going to use a disputed domain name for an email recorded delivery service. In those cases the Complainants note that UDRP panels have found that that the Respondent failed to justify why he had to register a domain name incorporating a particular well known mark. In circumstances that the Complainants' SOFITEL mark has such renown attaching to it the Complainants assert that the Respondent in this case cannot pretend that he did not know of its repute and that his use of it is legitimate. They say that the Respondent is taking advantage of the new gTLDs to register a series of well-known marks, presumably in the hope that he can sell them at a very considerable profit or can disrupt the respective owners' business. Accordingly, they say that the Respondent's activity cannot be legitimate.
As far as registration in bad faith is concerned the Complainants say that considering their worldwide reputation and the degree of renown attaching to the SOFITEL trade mark, the Respondent must have been aware of the Complainants' very well reputed trade mark. They assert that the Respondent has engaged in a scheme such that he has registered approximately 10% of the domain names in the ".email" gTLD space including around 800 domain names reproducing trade marks, including those of very well-known personalities. They note that numerous cases under the UDRP have been successfully brought against the Respondent in relation to unauthorised registration of well-known or very well reputed trade marks and that this pattern of conduct is a further indication that the Respondent registered the disputed domain name in bad faith and for the purpose of re-sale at a profit or to disrupt the Complainants' business.
As far as use in bad faith is concerned, the Complainants submit that even though the disputed domain name currently resolves to a blank page, even a passive use of a domain name can amount to use in bad faith, as was found to be the case by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainants note that reproducing famous trade marks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith and that the clear inference to be drawn from the Respondent's operations is that he is trying to benefit from the fame of the Complainants' marks. This inference say the Complainants is only heightened by the Respondent's pattern of such conduct in previous UDRP cases in which the Respondent has been found to have engaged in behaviour characteristic of cybersquatting. Quoting from Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145:
Respondent fails to recognize that though his concept for a business may be legitimate, he cannot build his business on the back of another's rights (…). The way he explains his business, he would not have a business [with respect to confirming email to Sanofi] if he did not utilize the disputed domain name containing Complainant's trademark. Whether or not his customers see the back-room features, he is exploiting Complainant's mark for a commercial purpose
The Complainants further submit that the fact the disputed domain name includes the gTLD suffix ".email" only serves to increase the likelihood of confusion because users may wrongly identify such use as being linked to communications or promotions endorsed by the Complainants, in particular the disputed domain name could be used for spam purposes. As a consequence the Complainants submit that the disputed domain name has both been registered and used in bad faith.
Essentially the Respondent argues that the disputed domain name will only be used in his proposed business model in the context of a back-end, non-public process of verifying and routing emails. He says that based on United States case law he will not be selling web addresses containing the SOFITEL mark to his customers or displaying this trade mark to consumers and will not be using the trade mark to identify a source of goods or services and therefore a United States court would hold that there is no trade mark use.
The Respondent goes on to submit that the gTLD ".email" distinguishes the disputed domain name from the Complainant's trade mark. In this regard, he submits that it is not just the presence of the ".email" in the disputed domain name that shows that the disputed domain name is not identical or confusingly similar to the Complainants' marks, but it is the Respondent's use of <sofitel.email> as a back-end, non-public directory which is invisible to consumers.
As far as the second element of the Policy is concerned the Respondent says that he is developing a legitimate and lawful business model around the new ".email" gTLD platform. This business model uses the disputed domain name as a back-end, non-public email server in order to route emails for the storing of metadata which will allow the system to certify delivery and potentially receipt. The Respondent says that only his employees will ever see the disputed domain name and since he is only undertaking the certification of email services, it is acting as a "courier" and is not selling the disputed domain name itself. In these circumstances he says that it is impossible to claim trade mark infringement since there is no trade mark use of the disputed domain name.
The Respondent submits that he has in this way made demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods and services. He says that his email certification service will be free to both the sender and recipient and that he is in no way trying to divert traffic for commercial gain. He says that the Complainants' trade mark rights are not harmed and that the Complainants will not be required to pay for this service which will be placed into testing mode shortly.
The Respondent says that by limiting the use of the disputed domain name to route and capture email meta data he is making a legitimate fair use of the <sofitel.email> domain name, with no intent to profit from the disputed domain name. The Respondent says that he is simply using the disputed domain name as a back-end email server to route and store email metadata, not to host any website. The Respondent notes that he applied on August 1, 2014 for a Community Trade Mark for YOYO.EMAIL for his proposed certification email business.
The Respondent says that he has never intended to profit in any way related to use of the disputed domain name as a trade mark. The Respondent says that he has not used the disputed domain name to date to profit from advertising connected to the use of its proposed trade mark-related web service and neither is there any evidence, beyond speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the disputed domain name in such a way. He says that the fact that he intends to be a for profit business in general from the use of the many generic domain names he has registered, in no way supports the leap that he intends to profit from the disputed domain name or from the Complainants' trade marks.
Concerning registration and use in bad faith, the Respondent submits that he is not using the disputed domain name for commercial gain or to defraud the public by creating a false impression that the domain name is the Complainants' genuine Internet name. The Respondent says that he is using the <sofitel.email> domain name only as a back-end non-public process of verifying and routing emails. The Respondent says that he did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainants and that this is the reason that it politely rejected the Complainants' offer through its counsel of USD 1000 to transfer the disputed domain name. He further says that it did not register the disputed domain name for the purpose of disrupting the business of the Complainants, but instead to provide a new way in email verification without any possibility of likelihood of confusion by consumers.
The Respondent notes that panels will not award a transfer of a domain name to a complainant if the complainant's arguments concerning bad faith are merely speculative and do not make a clear case of bad faith registration. The Respondent submits that this is the case here as there is no evidence that it possesses bad faith intent such as will mislead or divert consumers.
In addition the Respondent note the various Uniform Rapid Suspension System ("URS) proceedings brought by complainants against him in analogous cases which have not succeeded and also notes the legal proceedings that he is involved in both in the United States and in the United Kingdom with parties other than the Complainants but concerning analogous situations concerning his proposed business model. He says that these materials establish a legitimate business interest and a lack of bad faith intent to profit from the disputed domain names concerned. In short he submits that it is not a cybersquatter and that the Complaint should be denied.
6. Discussion and Findings
The Complainants made a supplementary filing after these proceedings had closed. There are no special circumstances or additional facts submitted by the Complainants such as would support the admission of this filing into these proceedings and therefore the Panel finds in its discretion that it is not appropriate to do so.
The Respondents made a supplementary filing after this proceeding has closed and after the decision due date. The filing attached a copy of a United States District Court of Arizona declaratory judgment in a matter concerning a ".email" domain name that is unrelated to this proceeding (see Rules, paragraph 18(a)). The judgment appears to have been given by consent of both parties to that court proceeding and as a consequence of a settlement between them and does not address the factual circumstances of the current proceeding. Accordingly it is not relevant and the Panel exercises its discretion under the Policy not to admit this supplementary filing into the record.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have demonstrated that they owns various trade mark registrations for the word mark SOFITEL as noted above. In addition the Panel notes that the SOFITEL mark has been used in many countries worldwide in connection with the Complainants' provision of hotel services and related activities and enjoys a very substantial degree of renown, possibly such that it falls into the category of marks that are described as being "well known". Further the SOFITEL mark appears to the Panel to be a coined term that has no meaning in the English or French languages and as a result is highly distinctive in its own right.
The Policy requires that the disputed domain name is either identical or confusingly similar to the mark in which the Complainants assert that they have rights. Contrary to the submissions of the Respondent in this case this assessment does not concern whether or not there is trade mark use and neither is it relevant, nor appropriate to apply any likelihood of confusion test under a particular national law. As this Panel has noted previously, the Policy should be interpreted based on its own language and to the extent possible consistently with previous panel decisions under the UDRP, even though no doctrine of binding precedent is applicable. It is well established that the Policy requires an objective comparison as to whether a disputed domain name is identical or confusingly similar to a trade mark in which a complainant has rights.
If the ".email" suffix is not taken into consideration in this comparison, which was accepted by the large majority of UDRP panels as the appropriate test before the advent of the new gTLDs, then the disputed domain name is clearly identical. However, even if the ".email" suffix is taken into account then, in the Panel's view, the disputed domain name is confusingly similar to the Complainants' SOFITEL mark. This is because the disputed domain name wholly incorporates this mark and the the generic suffix ".email" and on an objective side by side review for confusing similarity, the Panel considers that the natural assumption would be to consider that the disputed domain name is owned by or associated with the Complainants. There is no element of the ".email" suffix or of the overall combination <sofitel.email> that distinguishes the disputed domain name or that might detract from this view and accordingly the Panel has no difficulty in finding confusing similarity.
The Panel rejects outright any suggestion that a finding of confusing similarity is impossible because of the particular factual circumstances of this case, namely the Respondent's proposed "back-end" and non-customer-facing use of the disputed domain name. The appropriate test for confusing similarity under this element of the Policy is notional and objective. See WIPO Overview 2.0, paragraph 2.1.
As a result the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainants submit that they have not authorised the Respondent's use of the disputed domain name and are not associated or affiliated with the Respondent in any way. They assert that the Respondent is not commonly known by the disputed domain name and is not making a fair use or legitimate noncommercial use of the disputed domain name. They also say that there is no evidence that the Respondent is using the disputed domain name in relation to the provision of bona fide goods or services.
The main thrust of the Respondent's argument is that he is planning on using the <sofitel.email> domain name only as a back-end non-public process of verifying and routing emails which is a legitimate use that cannot detrimentally affect the Complainants' trade mark rights or otherwise defraud the public because the disputed domain name will not be used in a consumer facing way. He further says that he did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainants and that this is the reason that he rejected the Complainants' prior offer through its counsel of USD 1000 for transfer the disputed domain name. In addition he says that he does not profit from the disputed domain name in any way whether by linking advertising or otherwise.
The Respondent has not suggested that he has been authorised to use the Complainants' well reputed mark in this way or that he is commonly known by the mark or is making a noncommercial fair use of the disputed domain name incorporating the mark. His argument is really quite simple, namely that because the disputed domain name containing the Complainants' well reputed mark is being used in a back-end, non-public-facing capacity, albeit for a commercial email verification service, that this use is bona fide. However what the Respondent has failed to explain is – why in this case was it necessary to register the disputed domain name incorporating the Complainants' SOFITEL mark in the first place? Other UDRP panels have similarly asked this question and have come to the conclusion that the Respondent could have registered any other domain name for his purpose without seeking to register domain names incorporating well known marks. For example see The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. DomainManager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730.
This Panel is similarly not persuaded by the Respondent's arguments and does not consider that the mere act of using a domain name, particularly one containing a mark that is so well reputed, for a back-end, non-consumer-facing service, is necessarily bona fide. Even if such a use does not amount to trade mark infringement under particular national laws, that is not the test under the Policy, and such registration without a supporting trade mark right or a credible justification does prevent the bona fide owner of an identical mark from registering in the ".email" gTLD space. The Complainants may well wish to register in the ".email" gTLD space and subject to a successful prior application by a competing trade mark owner or other bona fide registration should be able to do so. The fact that the Respondent has registered approximately 800 domain names incorporating well known or reputed trade marks in the ".email" gTLD space, without also owning supporting trade mark rights only reinforces the Panel's concerns in relation to the Respondent's bona fides. For these reasons and as set out below the Panel finds that the Respondent has not successfully rebutted the Complainants' case under this element of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainants' SOFITEL trade mark is one of that category of trade marks that is either well known or at the least highly reputed. As noted above, it has been used in numerous jurisdictions worldwide including for many years in the United States and in the United Kingdom in relation to the Complainants' brand of luxury hotels and related goods and services. The Respondent has not denied knowledge of the mark and the Panel infers that the Respondent registered the disputed domain name, which the Panel notes wholly incorporates the SOFITEL mark without any distinguishing element, with knowledge of the Complainants' rights.
The Respondent says that he registered the disputed domain name for the purpose of his back-end service, which will in no way harm the Complainants' trade mark rights because consumers will never see it in use and therefore there can be no infringement or likelihood of confusion. This is all very well, but in fact the Policy is not concerned with trade mark infringement, but rather with cybersquatting and it is the task of the Panel to determine under this element of the Policy whether the Respondent has both registered and used the disputed domain name in bad faith.
Where a trade mark that is well known or at the least highly reputed, such as the SOFITEL mark is wholly incorporated into a disputed domain name UDRP panels have generally found there to be a strong inference that the respondent had knowledge of the complainant's trade mark rights and registered the disputed domain name in bad faith. This is always of course subject to a respondent submitting a credible argument to the contrary.
In this case, the Respondent has failed to point out why he needed to wholly incorporate the Complainants' mark into the disputed domain name, when presumably he could have used any domain name for the purposes of its back-end email verification service. This coupled with the fact that Respondent has gone to the not inconsiderable expense and trouble of registering at least 800 other domain names that contain well-known or reputed trade marks, apparently for similar purposes and it seems without owning supporting trade mark rights or having any other justification and in doing so has not only prevented the Complainants from registering their domain name in the ".email" gTLD space, but appears to have engaged in a pattern of such conduct (see e.g., The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, supra. See also Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, supra; NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0770. This reinforces the Panel's inference that the Respondent has registered the disputed domain name most likely for illegitimate purposes. The Panel underlines for the benefit of the Respondent that it is one thing to stockpile domain names containing truly generic terms and it is quite another to stockpile domain names which wholly incorporate well-known or reputed trade marks, without either supporting trade mark rights or a credible justification. For these reasons the Panel finds that on the balance of probabilities the Respondent registered the disputed domain name in bad faith.
However that is not the end of the matter under this element of the Policy. The Respondent has not since registration of the disputed domain name in April 2014 actively used the disputed domain name and the question remains as to whether for the purposes of the Policy the Respondent has used the disputed domain name in bad faith.
The passive holding of a domain name has in certain circumstances been found almost from the inception of the Policy to amount to bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). These circumstances include where the subject mark has a strong reputation and is widely known and where the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name. All of the other relevant circumstances of the case should also be taken into account in this analysis.
In this case, the disputed domain name is either well known or very well reputed. The Respondent has not in the Panel's view demonstrated a credible or bona fide potential use for the disputed domain name. Not only has the Respondent failed to justify why there is a need to wholly incorporate the Complainants' mark into the disputed domain name and why no alternative will do for his back-end email verification service, but he has failed to explain how using the disputed domain name for his proposed commercial for profit business would not effectively amount to trading off the Complainants' rights without authority and therefore amount to use in bad faith. The Panel notes that a similar view was expressed by the panel in Sanofi v. Giovanni Laporta, supra.
In addition the Respondent's conduct in registering both the disputed domain name and over 800 other domain names incorporating well known or reputed marks, prevents both the Complainants and a large number of other brand owners from registering a domain name in the ".email" gTLD space that is identical to their particular trade mark. As noted earlier, this is evidence of registration and use in bad faith under paragraph 4(b)(ii) of the Policy.
To this Panel, the Respondent's conduct is akin to a "land grab" without having any supporting or competing trade mark rights for the disputed domain name. The Respondent's argument that the proposed use of the disputed domain name for its email verification service is bona fide is, in the Panel's view, contrived. At the end of the day, the Respondent's proposed use of the disputed domain amounts to an unauthorised use for commercial purposes of the SOFITEL mark wholly contained within the disputed domain name. Whether this amounts to trade mark infringement or not under any particular national law is beside the point. It is not bona fide use, and in these circumstances, the Panel finds that the Respondent's passive holding of the disputed domain name amounts to use in bad faith.
That the Respondent argues so vehemently that he should be able to maintain registration of the disputed domain name in all of these circumstances is surprising. In the Panel's view, the Respondent's conduct here amounts to cybersquatting and is precisely what the Policy was designed to combat. To find otherwise under the UDRP would be to mandate a charter for cybersquatting.
For completeness, the Panel notes that it is entirely unsurprising that complaints made against the Respondent in similar circumstances have failed under the URS and the Panel discounts the examples cited by the Respondent accordingly. The URS was designed for entirely straightforward, open and shut cases of cybersquatting, not for cases involving the novelty and complexity of arguments in a case such as this.
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 <sofitel.email> be transferred to the Complainants.
Date: November 7, 2014