WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Charles Wang / Xiamen eNameNetwork Co., Ltd

Case No. D2015-0470

1. The Parties

The Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.

The Respondents are Charles Wang of Beijing, China / Xiamen eNameNetwork Co., Ltd of Xiamen, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <sofitel-so.com> and <so-sofitel.com> are registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 18, 2015, the Registrar 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 Complainants on March 19, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 24, 2015.

On March 19, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 23, 2015, the Complainants confirmed their request that English be the language of the proceeding. On March 23, 2015, the Respondent replied by email in Chinese and claimed to contend any argument made by the Complainants. He claimed to be the trade mark owner of SOFITEL-SO and SO-SOFITEL in some locations and that there was no dispute. He did not provide any details of his trade mark registrations.

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, in English and Chinese, and the proceeding commenced on March 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on April 27, 2015. 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 May 8, 2015, the Respondent submitted an unsolicited supplemental filing to the Center, the contents of which are described in the Parties Contentions section, infra.

4. Factual Background

The Complainants in this case are Accor and its subsidiary, SoLuxury HMC. The first Complainant operates more than 3,700 hotels in 92 countries worldwide with over 480,000 rooms. The first Complainant’s group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE, SOFITEL and IBIS.

SOFITEL is a luxury trade mark of the second Complainant. SOFITEL is the only French luxury hotel brand with a presence in five continents, in almost 40 countries (more than 30,000 rooms). “Sofitel So” is a new “designer boutique hotel” label epitomised by ultra-contemporary style in trendy destinations.

SOFITEL hotels are also located in China where there are 18 hotels.

The Complainants, specifically SoLuxury HMC, own trademark registrations for SOFITEL and SO BY SOFITEL dating from at least 2007.

The Complainants operate, amongst others, domain names reflecting their trade marks, including <sofitel.com> registered on April 11, 1997 and <sofitel.cn> registered on March 17, 2003.

The disputed domain names were registered on July 15, 2014 and resolve to inactive websites.

On August 21, 2014, the Complainants sent cease-and-desist letters via registered letter and email to Ibm, Charles Wang, the registrant originally on the WhoIs records, requesting the latter to transfer the disputed domain names to the Complainants. The registrant, Ibm, Charles Wang, replied to the Complainants, asking them to put forward a reasonable offer. The Complainants refused to pay for the disputed domain names since they contained their trade marks but instead proposed to reimburse the registrant for the registration fees. The registrant rejected the proposed offer and claimed to have trade mark rights in SO-SOFITEL and SOFITEL-SO in some locations.

After these exchanges of correspondence, the WhoIs records of the disputed domain names changed and listed as the registrant the privacy service Xiamen eName Network Co., Ltd. Another cease-and-desist letter via registered letter and e-mail was sent to the new registrant on record but no response was obtained despite several reminders sent.

5. Parties’ Contentions

A. Complainant

1. The disputed domain names are confusingly similar to a trade mark in which the Complainants have rights. The Complainants own and operate several hotels under the trade marks SOFITEL and SO BY SOFITEL, which are well-known trade marks, protected worldwide particularly in relation to hotels and restaurants services. Their trade mark registrations include:

(i) International trade mark No. 939096 for SOFITEL (designating, inter alia, China) dated August 30, 2007, covering services in Classes 35, 36, 43 and 44; and

(ii) International trade mark No. 927545 for SO BY SOFITEL (designating, inter alia, China) dated April 23, 2007, covering goods and services in Classes 16 and 43.

The disputed domain names reproduce the Complainants’ trade mark SOFITEL in its entirety. Previous UDRP panels have considered SOFITEL to be well known in the field of hotels. See e.g., Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650, Accor, SoLuxury HMC v. Zeng Zheng, WIPO Case No. D2013-1541, Accor, SoLuxury HMC v. Yin Wei Fen, WIPO Case No. D2012-0553 and Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262.

The disputed domain names not only incorporate the trade mark SOFITEL in its entirety but also imitate the prestigious trade mark SO BY SOFITEL. The substitution of the term “by” with a hyphen or mere inversion of the terms of the trade mark do not significantly affect the appearance or pronunciation of the disputed domain names. The Complainants have used the trade marks SOFITEL and SO BY SOFITEL in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under these marks as being those of the Complainants. Therefore, the public would reasonably assume that the disputed domain names would be owned by the Complainants or that they are related to the Complainants.

The extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainants’ trade marks and the disputed domain names.

2. The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with the Complainants in any way nor have they been authorized by the Complainants to use and register their trade marks, or to seek registration of any domain name incorporating the said marks. Furthermore, the Respondents have no prior rights or legitimate interest in the disputed domain names. The date of registration of the SOFITEL and SO BY SOFITEL trade marks precede the date of registration of the disputed domain names by years. The disputed domain names are so identical or confusingly similar to the Complainants’ famous SOFITEL and SO BY SOFITEL trade marks that the Respondent cannot reasonably pretend that they were intending to develop a legitimate activity through the disputed domain names. The Respondent, Charles Wang, appears to be a cybersquatter, possessing a portfolio of domain names reproducing famous trade marks, e.g. <bentley-china.com>, <cisco-china.com>, <fiat-bank.com>, <merckchina.com> and <michelin-china.com>.

The subsequent registration by the Respondent Charles Wang with a privacy shield service shows the Respondent’s intention to hide his identity and prevent the Complainants from contacting him. This demonstrates that the Respondents have no rights or legitimate interests in respect of the disputed domain names. It appears that the only reason why the Respondent has registered the disputed domain names is for the purpose of selling them to the Complainants for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names. Further, the Respondent Xiamen eName Network Co., Ltd never responded to the Complainants’ letter of demand despite several reminders. It can therefore be assumed that the Respondents have no rights or legitimate interest in the disputed domain names.

The disputed domain names resolve to inactive pages which show that the Respondents have not made any reasonable and demonstrable preparations to use the disputed domain names since its registration. Consequently, the Respondents failed to show any intention of noncommercial or fair use of the disputed domain names.

3. The disputed domain names are registered and being used in bad faith.

It is implausible that the Respondents were unaware of the Complainants and of their trade marks when they registered the disputed domain names. Firstly, the Complainants are well-known throughout the world and their trade mark registrations cover China, the home country of the Respondents. A simple search via Google or any other search engine using the keywords “SOFITEL” or “SO BY SOFITEL” would have brought forth results pertaining to the Complainants or their products. Bad faith can be found where a domain name is so obviously connected with a well-known trade mark that its very use by someone with no connection to the trade mark suggests opportunistic bad faith. Given the reputation of the SOFITEL trade mark, registration in bad faith can be inferred.

The fact that the registrant Charles Wang has a portfolio of domain names reproducing famous trade marks and has sought to conceal his identity by using a privacy service indicate registration in bad faith. The Respondents have neither tried to defend their rights nor stated any valid arguments to justify the registration of the disputed domain names in response to the Complainants’ cease-and-desist letter.

What transpired between the Complainants and the Respondent Charles Wang, strongly indicates that the latter had hoped to sell the disputed domain names to the Complainants or to a competitor of the Complainants. This constitutes clear evidence of registration and use in bad faith. It is well established that the offer to sell a domain name in excess of the out-of-pocket expenses of the respondent in registering the domain name is compelling evidence of bad faith registration and use.

The disputed domain names resolved to inactive pages since their registration and remain inactive. Such passive holding does not preclude a finding of bad faith. The reproducing of 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.

B. Respondent

In addition to the email of March 23, 2015, discussed in the Procedural History, the Respondent, Charles Wang, also submitted an unsolicited supplemental filing in the Chinese language to the Center on May 8, 2015.¹ He stated in four brief lines to the effect that:

- the disputed domain names he registered are for his personal use;

- he denies all the Complainants’ assertions;

- what he registered is used in Mainland China; and

- the Complainants are not the trade mark holder of “sofitel-so” and “so-sofitel”.

6. Discussion and Findings

A. Unsolicited Supplemental Filing

Paragraph 10(c) and (d) of the Rules provide that:

“(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.”

Whilst the Panel is not inclined to accept such a late submission from the Respondent, it finds that what the Respondent has stated to be of virtually no weight or relevance, primarily because they are bare statements without supporting evidence or arguments.

B. Language of the Proceeding

Paragraph 11(a) of the Rules stipulates that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Panel is also mindful of paragraph 10(b) and (c) of the Rules which stipulate, that:

“(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.”

The Complainants requested that English be the language of the proceeding. They submitted that whilst there is the aforesaid language requirement, the spirit of paragraph 11(a) is to ensure fairness in the language selection by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred, and the possibility of a delay in the proceeding if translations were mandated. In this instance, the Complainants are located in France and have no knowledge of Chinese. To proceed in Chinese, the Complainants would have to engage translation services at a cost that is likely to be higher than the overall cost of the proceeding. Further, the disputed domain names comprise only Latin characters which strongly suggests that the Respondents have knowledge of languages other than Chinese. The Respondent’s other domain name registrations contain words such as “China” and “hotel”. The Respondent, Charles Wang, communicated with the Complainants in English.

The Respondent did not respond on the issue of the language of the proceeding.

The Panel determines that it would be appropriate for English to be the language of the proceeding. The fact that the Respondent, Charles Wang, could communicate and respond to the Complainants’ cease-and-desist letter in English is a strong indicator that the Respondent would not be prejudiced if English is adopted as the language of the proceeding. To require the Complainants to have the Complaint and evidence translated into Chinese would moreover unduly delay the proceeding. The fact that the Respondent had the opportunity to, but did not object to English being the language of the proceeding is a relevant factor.

C. Identical or Confusingly Similar

The Panel accepts that the Complainants have trade marks rights in SOFITEL and SO BY SOFITEL. The domain extension “.com” is in these circumstances to be disregarded in considering the issue of whether the disputed domain names are identical or confusingly similar to the Complainants’ trade marks. The SOFITEL mark has been incorporated in its entirety and is clearly identifiable in the disputed domain names. The SO BY SOFITEL mark is also evoked by the disputed domain names.

The Panel accordingly finds that the disputed domain names are confusingly similar to the Complainants’ SOFITEL and SO BY SOFITEL marks.

Paragraph 4(a)(i) of the Policy is satisfied.

D. Rights or Legitimate Interests

It is the consensus view of UDRP panels that once a prima facie case has been established by a complainant that the respondent lacks rights or legitimate interests in respect of a domain name in dispute, the respondent has the burden thereafter of producing evidence to demonstrate its rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel accepts that a prima facie case has been established by the Complainants in this regard since they have no relationship with the Respondent and the Complainants have not authorized the Respondent to use or incorporate the said trade marks in a domain name registration.

Whilst the Respondent claimed to be the trade mark owner of SOFITEL-SO and SO-SOFITEL in some locations, no evidence of such rights was submitted.

Paragraph 4(c) of the Policy 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 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.”

None of the above-mentioned circumstances can be found in this case. The Respondent made bare claims in his response and failed to provide any evidence or show circumstances which would lend support to a defence against the Complainants’ contentions that he lacks rights or legitimate interests in the disputed domain names.

In the absence of evidence to the contrary, the Panel therefore finds that the Respondent lack rights or legitimate interests in the disputed domain names.

Paragraph 4(a)(ii) of the Policy is satisfied.

E. Registered and Used in Bad Faith

The disputed domain names were registered many years after the Complainants registered their SOFITEL and SO BY SOFITEL marks. The Respondent has not explained how he devised the disputed domain names or came to choose the specific combination of words in the disputed domain names, nor did he provide evidence of any actual or contemplated good faith use of the disputed domain names. The Panel also notes that the Respondent is associated with many other domain names which contain well-known marks. There appears to be a pattern of conduct in the misappropriation of well-known marks which is strongly indicative of what is described in paragraph 4(b)(i) of the Policy:

“circumstances indicating that you 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 trade mark 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”.

The adoption of the Complainants’ well-known trade marks in the disputed domain names cannot be regarded as registration and use in good faith. The fact that the disputed domain names were passively held does not prevent a finding of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel therefore concludes that the disputed domain names were registered and are being used in bad faith.

Paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

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 <sofitel-so.com> and <so-sofitel.com> be transferred to the Complainant, namely SoLuxury HMC .

Francine Tan
Sole Panelist
Date: May 12, 2015

¹ As a preliminary matter, the Panel notes that, although the Complainants make reference to multiple Respondents, the Panel, in its discretion, will treat Charles Wang as the sole Respondent in this proceeding, as he is the person confirmed by the Registrar as the registrant of the disputed domain names.