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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor SA, SoLuxury HMC v. Ekramy Gaber El Said Ashry

Case No. D2018-1063

1. The Parties

1.1 The Complainants are Accor SA of Issy-Les-Moulineaux, France and SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France (the "Complainant").

1.2 The Respondent is Ekramy Gaber El Said Ashry of Salalah, Oman, self-represented (the "Respondent").

2. The Domain Names and Registrar

2.1 The disputed domain names <hotelssofitel.com>, <sofitelcityhotel.com> and <sofiteldayhotel.com> (the "Disputed Domain Names") are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 16, 2018, 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.

3.2 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").

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. The Response was filed with the Center on May 19, 2018. On May 19, 2018 and May 24, 2018, the Respondent submitted two further emails with the Center.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 18, 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

4.1 The Complainants in this administrative proceeding, Accor SA and its subsidiary So Luxury HMC, are French companies. The Complainants are said to be major players in the upscale and luxury hospitality services and have for 45 years provided customers with their expertise in the hospitality business. The Complainants are said to operate more than 4,000 hotels in 100 countries worldwide and provide around 570,000 rooms from economy to upscale. The Complainants' group includes hotel chains such as Pullman, Novotel, Mercure, Sofitel and Ibis. It is also said that the Complainants in 1964 created the Sofitel Hotels and Resorts hospitality brand which comprises 126 hotels in 42 countries and consists of 31,939 rooms.

4.2 The Respondent according to the publicly available WhoIs records is Ekramy Gaber El Said Ashry.

4.3 The Respondent registered the Disputed Domain Names <sofitelcityhotel.com> and <sofiteldayhotel.com> on February 01, 2018 and the Disputed Domain name <hotelssofitel.com> on May 12, 2016. The Disputed Domain Names resolve to websites featuring sponsored links.

5. Parties' Contentions

A. Complainant

5.1 The Complainants are said to own and operate several hotels under the trademarks SOFITEL, a well- known trademark, protected worldwide in particular in relation to hotels and restaurant services. The Complainants also own the following trademark registrations namely:

- International trademark SOFITEL No. 863332, registered on August 26, 2005, (duly renewed) and covering services in classes 35, 39 and 43;

- International trademark SOFITEL No. 939096, registered on August 30, 2007, (duly renewed) and covering services 35, 36, 43 and 44;

- European Union trademark SOFITEL No.004303277, registered on February 3, 2006, (duly renewed) and covering services 35, 39 and 43.

The Complainants also operate among others domain names reflecting their trademarks in order to promote their services, such as <sofitel.com>, registered on April 11, 1997.

5.2 The Complainants therefore assert that the Disputed Domain Names are identical or at least confusingly similar to the Complainants' SOFITEL trademarks in that the Disputed Domain Names reproduce entirely the Complainants' SOFITEL trademark, which previous UDRP panels have considered as well-known. See for instance, Accor and SoLuxury HMC v. Paul Botterill, WIPO Case No. D2015-0513, amongst other numerous decisions cited by the Complainants. It is further contended that the mere addition of the generic terms "city", "hotel", "day", and "hotels" to the respective Disputed Domain Names does nothing to avoid a likelihood of confusion as the generic terms give an impression to Internet users that the Disputed Domain Names are connected to the Complainants in some ways. See in this regard, Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-0739. Furthermore, it is contended that the generic Top-Level Domain ("gTLD") ". com" in the Disputed Domain Names is normally of no consequence when conducting a confusing similarity examination between the Disputed Domain Names and the Complainants' trademark. See, Alstom v. Itete Peru S.A, WIPO Case No. D2009-0877.

5.3 The Complainants assert that the Respondent has no rights or legitimate interests in the Disputed Domain Names in that the Respondent is not affiliated with the Complainants in any way and the Respondent has not been authorised to use and register the Complainant's SOFITEL trademark or to seek registration of any domain names incorporating the said trademark. The Complainants further contend that the Respondent is not commonly known by the trademark SOFITEL. Furthermore, it is argued that the Respondent did not demonstrate use of or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. On the contrary, each of the Disputed Domain Names resolves to a parking page displaying commercial links, some of which relate to the hotel industry and to the Complainants and their competitors. As these parking pages also display pay-per- click links likely to generate revenue, the Respondent cannot be deemed to be engaged in a legitimate noncommercial or fair use of the Disputed Domain Names. See, Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268. The Complainants also allude to the fact that the Respondent failed to respond to the Complainants' cease and desist letter despite numerous reminders. Following Areva v. St James Robyn, WIPO Case No. D2010-1017, it is submitted that when respondents do not avail themselves of the right to respond to complainants it can be assumed that the respondents have no rights or legitimate interests in the disputed domain names.

5.4 On the question of bad faith registration and continued use in bad faith, the Complainants refer to several circumstances indicating that the Respondent has registered and has continued to use the Disputed Domain Names in bad faith. Firstly, the Respondent must have been aware of the Complainants' prior rights in the SOFITEL trademarks when the Disputed Domain Names were registered in that the Complainants are well-known throughout the world and the Respondent registered three domain names composed of a reproduction of the Complainants' trademarks SOFITEL and the addition of the descriptive terms "hotel" and "hotels" which corresponds exactly to the Complainants' fields of activity. Secondly, it is contended that following paragraph 2 of the Policy, a registrant of a domain name warrants to the registrar that to its knowledge the registration of the domain name will not infringe the rights of a third party. Therefore, it is the duty of the registrant to verify that the registration of the domain name will not infringe the rights of any third party. See, Carolina Herrera, Ltd v. Alberto Rincon Garcia, WIPO Case No. D2002-0806. Thirdly, it is stated that a quick trademark search or indeed a simple Google search before registering the Disputed Domain Names would have revealed the existence of the Complainants' prior trademark rights in the SOFITEL trademarks, therefore considering the worldwide reputation of the Complainants' SOFITEL trademarks, it is implausible for the Respondent to contend that he was unaware of the Complainants' prior trademark rights before electing to register the Disputed Domain Names. Accordingly, it is submitted that previous UDRP panels have held that knowledge of a complainant's intellectual property rights including trademarks at the time of registration is evidence of bad faith registration. See, Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287. Fourthly, the Complainants state that investigations have revealed that the Respondent has registered around 377 domain names mostly related to the hotel industry such as <alfarnarhotels.com> and <albaleedresort.com>. It is therefore submitted that as the Respondent is involved in a pattern of cybersquatting, this is a further evidence of bad faith following Compagnie Generale des establishments Michelin, Michelin Recherche et Technique S.A. v. Rajeev Sankaran, WIPO Case No. D2010-0730. Fifthly, the fact that the Respondent uses the Disputed Domain Names to direct Internet users to websites displaying commercial links related to the hospitality industry and notably those of the Complainants and their competitors is additional proof of bad faith. See, SNCF v. Comdot Internet Services Private Limited /PrivacyProtect.org, WIPO Case No. D2008-0025. Sixthly, the Complainants state that email servers have been configured using the Disputed Domain Names and therefore there might be a risk that the Respondent is engaged in a phishing scheme aimed at stealing valuable information such as credit card details from the Complainants' clients or employees. See in this regard the recent decision in Accor SA v Domain Admin C/O ID# 10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225.

B. Respondent

5.5 The Respondent in his response to these administrative proceeding states that he does not accept that the Disputed Domain Names should be transferred to the Complainants as he obtained the Disputed Domain Name <hotelssofitel.com> from "expired domains".

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainants must prove that (i) the Disputed Domain Names are identical or confusingly similar to the trademark or service mark of the Complainants; (ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 The Panel accepts that the Complainants are the registered owners of several registrations for the trademark SOFITEL world-wide. The Panel finds without any hesitation that upon a visual examination, the Disputed Domain Names <sofitelcityhotel.com>, <sofiteldayhotel.com> and<hotelssofitel.com> are confusingly similar to the Complainants' SOFITEL trademarks. Undoubtedly, all the Disputed Domain Names wholly incorporate the Complainants' trademark. See the detailed discussion on the test for confusing similarity at sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Thus the mere addition of descriptive terms such as "city", "day", "hotel", and "hotels" to the Disputed Domain Names as well as the gTLD ".com" does absolutely nothing to prevent a finding of confusing similarity.

6.4 The Panel therefore finds that the Complainants have established that the Disputed Domain Names are confusingly similar to the Complainants' trademarks.

B. Rights or Legitimate Interests

6.5 The Panel also finds that the Respondent has failed to adduce any evidence or circumstances that establish that he has any rights or legitimate interests in the Disputed Domain Names within the ambit of paragraph 4(c) of the Policy. As submitted by the Complainants, the Respondent has not been authorised or licensed by the Complainants to utilize or register the Disputed Domain Names; nor is there any evidence that the Respondent has commonly been known by the Complainants' SOFITEL trademark or ever been affiliated or associated with the Complainants. It is also the Complainants' case that the Respondent is using the Disputed Domain Names to direct Internet users to a parking page displaying commercial links related to the hotel industry and to pay-per-click links which are likely to generate revenues. The Panel finds that on any view such conduct cannot be described as a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the Disputed Domain Names within the ambit of paragraph 4(c) of the Policy.

6.6 Accordingly, the Panel is satisfied that the Complainants have established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Names as stipulated in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 With reference to bad faith registration and use, the Panel equally finds that the Respondent registered the Disputed Domain Names in bad faith and continues to engage in bad faith use. The Panel has taken into account a number of irrefutable factors arising from the unchallenged contentions of the Complainants to conclude that the Respondent has undoubtedly registered the Disputed Domain Names in bad faith and has continued in bad faith use. In the first instance the Panel finds that the addition of the descriptive words "hotel" and "hotels" to the Disputed Domain Names is a clear indication that the Respondent elected to exploit the Complainants' worldwide reputation in the hotel business. Clearly, a simple trademark search and or a Google search would have revealed to the Respondent the prior trademark rights owned by the Complainants as at the time the Respondent decided to register the Disputed Domain Names. Under these circumstances, the Respondent cannot claim to have been unaware of the existence of the Complainants' prior trademark rights. Prior knowledge of the Complainants' intellectual property rights including trademarks is suggestive of bad faith registration. See in this regard Lancome Parfums et Beaute & CIe, L' Oreal v. 10 Selling, WIPO Case No. D2008-0226, which confirms that the Respondent's failure to conduct a trademarks search, is a contributory factor to the Respondent's bad faith registration and use. Secondly, the Respondent failed to respond to the Complainants' cease and desist letter and several follow up reminders is further evidence of bad faith registration and use. Thirdly, the fact that the Disputed Domain Names resolve to parking pages displaying pay-per-click links which are likely to generate revenues, and to commercial links, some of which are related to the hotel industry and the Complainants' competitors is further proof of bad faith registration and use. See in this regard SNCF v. Comdot Internet Services Private Limited/PrivacyProtect.org, supra. Fourthly, it is suggested that there is a risk that the Respondent may be engaged in a phishing scheme to appropriate valuable information such as credit card details from the Complainants' clients and/or employees since email servers have been configured on the Disputed Domain Names. See in this regard Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org/ Yogesh Bhardwaj, supra. Fifthly, as the Complainants have revealed that the Respondent has registered around 377 domain names relating to the hotel sector and having registered three Disputed Domain Names containing the Complainants trademark such conduct of multiple domain name registration is further evidence of bad faith registration and use. See in this regard Compagnie Generale des Etablissement Michelin, Michelin Rechercher et Technique S.A. v. Rajeev Sankaran, supra.

6.8 The Panel is therefore satisfied that the Respondent registered all three Disputed Domain Names in bad faith and continues to use them in bad faith.

7. Decision

7.1 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, <hotelssofitel.com>, <sofitelcityhotel.com> and <sofiteldayhotel.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: July 2, 2018

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