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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. WhoisGuard, Inc., WhoisGuard Protected / kopiko mcd

Case No. D2018-0424

1. The Parties

The Complainant is Accor and SoLuxury of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / kopiko mcd of Maju Jaya, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <gz-sofitel.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, 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 the Complainant on February 27, 2018 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 2, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2018.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on April 11, 2018. 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 factual information is derived from the Complaint and supporting materials submitted by the Complaint:

The Complainant is a provider of hospitality business services, and it operates more than 4,000 hotels in 95 countries worldwide. The Complainant’s business group includes notable hotel chains such as Pullman, Novotel, Grand Mercure, and Ibis. In 1964, the Complainant created a French international hospitality brand, Sofitel Hotels & Resorts, and one of the Sofitel hotels is located in Guangzhou, China.

The Complainant has used since 1964 and is currently using the word “Sofitel”. The Complainant is the registered owner of three international trademark registrations of the word “Sofitel”, the earliest of which was registered on August 31, 1995. The Complainant also is the registered owner of the domain names <sofitel.com> registered on April 11, 1997 and <sofitel.org> registered on April 30, 2001.

The disputed domain name, <gz-sofitel.com>, was registered with NameCheap, Inc. on September 8, 2017. According to the documentary evidence and contentions submitted, the disputed domain name now directs Internet users to an online gambling website in Indonesia. On October 3, 2017, the Complainant sent a cease-and-desist letter to the Respondent via postal letter and email notifying it of the Complainant’s trademark rights and requesting the Respondent to reveal the identity of the registrant and transfer the disputed domain name to the Complainant. No reply was obtained from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights because it entirely reproduces the Complainant’s trademark SOFITEL which is well-known and famous. The Complainant also asserts that the adjunction of the geographical code for Guangzhou, “gz”, preceded by a hyphen is merely a minor variation which is insufficient to create a distinctive domain name and that the disputed domain name is likely to create confusion because it includes the Complainant’s hotel named Sofitel, which operates a hotel in Guangzhou, China.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (i) the registration of the trademark SOFITEL preceded the registration of the disputed domain name; (ii) the Respondent is neither commonly known by the name Sofitel in any way nor authorized or licensed to use the trademark SOFITEL; (iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; and (iv) the Respondent never availed itself of its right to respond to the Complaint, which can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent knew or should have known of the Complainant’s trademark and the Respondent’s intention was to abusively benefit from the Complainant’s reputation and its trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent neither replied to the Complaint nor responded to the Center’s communication, and the Center found the Respondent in default. The consensus view of the UDRP panel in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañ­a de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

However, paragraph 14 of the Rules provides in the event of default that a panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.” “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.

A. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s trademark SOFITEL in its entirety. Although the disputed domain name includes “gz”, followed by a hyphen in front of SOFITEL, “UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy ‘when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name’. Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No.
D2013-0150 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

In light of the previous UDRP decisions and based on the inference in favor of the Complainant as allowed under the Rules, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant asserts, with various documentations and supporting materials, that the Respondent lacks any rights or legitimate interests in the disputed domain name.

The Consensus view of the UDRP panel is that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1; see also, Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The failure to submit a response by a respondent in some cases supports a finding of the lack of such rights, particularly in the absence of any license from the Complainant to use the Complainant’s trademark or incorporate it in a domain name. AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017.

After reviewing the assertions made in the Complaint and the supporting materials thereto, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. On the other hand, by never responding to the Complainant’s position, the Respondent failed to show any of the circumstances provided in paragraph 4c of the Policy. In particular, the Respondent has not been able to show either (i) before notice of the dispute, that it has used or has prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor (ii) that it has been commonly known by the disputed domain name, nor (iii) that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

First, the Panel finds that, as mentioned in the previous decision in Accor and SoLuxury HMC v. He Yong Jian, WIPO Case No. D2016-1919, the SOFITEL trademark has worldwide reputation and is to be regarded as a well-known trademark. Considering the Complainant’s worldwide brand awareness and its presence on the Internet, the Respondent knew or should have known about the trademark before registering the disputed domain name. See Allianz, Compañ­a de Seguros y Reaseguros S.A. v. John Michael, supra. The UDRP panel previously held that “registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.” Id.; see also, Veuve Cliquot Ponsarding, Maison Fondee en 1772 v. The Polygenix Group Col., WIPO Case No. D2000-0163. A more recent UDRP decision also held that “[t]his Panel agrees with previous Policy decisions to the effect that “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith. LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 (citing Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464.)

Second, the paragraph 4(b)(iv) of the Policy provides that a respondent is deemed to have registered and used a domain name in bad faith if “by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its Website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its Website or location or of a product or service on its Website or location.” The Panel took the liberty of entering into the Respondent’s website, “www.gz-sofitel.com”, and it appears to offer sponsored links to online gambling websites, as well as advertisements and postings in relation to such sites, none of which has anything to do with the trademark SOFITEL. The Complainant argues that this use of the disputed domain name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation and particularly from its trademark SOFITEL. The Panel finds this assertion persuasive, given that the disputed domain name is not related in any way to any goods, services, advertisements, or sponsored links provided by the Respondent, not to mention that the Respondent failed to provide any answers or explanations to such assertion. Further, the likelihood of confusion between the disputed domain name and the Complainant’s trademark SOFITEL is reinforced by the fact that the Complainant operates a SOFITEL hotel in Guangzhou, China.

Based on the combination of the two points mentioned above, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

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 name <gz-sofitel.com> be transferred to the Complainant, SoLuxury HMC.

Thomas P. Pinansky
Sole Panelist
Date: April 25, 2018

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