WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Joseph S Ong, Azanai Speed

Case No. D2018-1319

1. The Parties

The Complainants (collectively “the Complainant”) are Accor and its subsidiary, SoLuxury HMC both of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Joseph S Ong, Azanai Speed of Manila, Philippines.

2. The Domain Name and Registrar

The disputed domain name <china-sofitel.com> 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 June 13, 2018. On June 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2018.

The Center appointed C. K. Kwong as the sole panelist in this matter on July 23, 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 second named Complainant, SoLuxury HMC, is the owner of the following trademarks consisting of or comprising the word SOFITEL (see Annex 7).

Philippines trademark No. 4-2003-6473 for the mark SOFITEL registered on April 14, 2005 in respect of certain services under class 43;

Philippines trademark No. 4-2007-9562 for the mark SOFITEL registered on May 12, 2008 in respect of certain services under classes 43 and 44;

International trademark No. 863332 for the mark SOFITEL registered on August 26, 2005 designating, inter alia, China in respect of certain services under classes 35, 39, and 43;

International trademark No. 614992 for the mark SOFITEL registered on October 29, 1993, designating inter alia, China in respect of certain services under classes 35, 36, and 37;

International trademark No, 939096 for the mark SOFITEL registered on August 30, 2007, designating, inter alia, China in respect of certain services under classes 35, 36, 43, and 44.

SoLuxury HMC has also registered, inter alia, the domain name <sofitel.com> on April 11, 1997. The Complainant and its affiliates operate, among others, the website to which this <sofitel.com> domain name resolves to promote their services (see Annex 8).

The disputed domain name was registered on December 21, 2017. The disputed domain name resolves to a website displaying content from the website of the Chinese National Assembly of the Fengxian District in Shanghai.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name <china-sofitel.com> reproduces entirely the Complainant’s trademark SOFITEL.

2. The addition of the geographical term “China” is insufficient to avoid the likelihood of confusion.

3. The mere adjunction of a generic Top-Level Domain (“gTLD”) is irrelevant and is insufficient to avoid a finding of confusing similarity.

4. The disputed domain name is confusingly similar to the trademark SOFITEL.

5. The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the disputed domain name in 2017 was many years after the registration of the Complainant’s trademark SOFITEL.

6. The Respondent is not commonly known by the name “Sofitel” nor is it affiliated with the Complainant, nor authorized or licensed to use the trademark SOFITEL, to register any domain name incorporating this mark

7. The Respondent failed to provide a response to the Complainant’s letter before action.

8. The disputed domain name redirects to the official website of the Chinese National Assembly of the Fengxian District in Shanghai.

9. The Respondent has no rights or legitimate interests to the disputed domain name.

10. The Complainant is well known throughout the world and its trademark consisting of or comprising the word SOFITEL, is registered in the Philippines.

11. The Complainant’s presence in Manilla is well known with the presence of the Sofitel Philippine Plaza Manila.

12. A quick SOFITEL trademark search would have revealed to the Respondent, the existence of the Complainant and its SOFITEL trademarks.

13. A simple search via Google or any other search engine using the keyword “Sofitel” will show that all first results relate to the Complainant’s activities or news.

14. The Respondent has failed to provide an explanation for incorporating the word “Sofitel” in the disputed domain name.

15. No actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

16. The confusion will result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website.

17. Registration of the disputed domain name prevents the Complainant from using its trademark in the disputed domain name.

18. No actual or contemplated bona fide or legitimate registration and use of the disputed domain name can reasonably be claimed.

B. Respondent

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

6. Discussion and Findings

6.1. Notice of Proceedings

The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint.

Such contact details also match those provided by the Registrar to the Center on June 14, 2018.

On June 20, 2018, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded the Written Notice to the Respondent by courier, the delivering of which was apparently signed for by someone in Philippines on behalf of the Respondent on June 22, 2018.

The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.

The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.

6.2. Parties to the Proceedings

As SoLuxury HMC is a 100-percent owned subsidiary of Accor, both being numbers of the same commercial group seeking remedies from the same Respondent, it is proper for Accor and SoLuxury HMC to institute this proceeding together, both having a common grievance against the Respondent.

6.3. Substantive Matters

In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

The said three elements are considered below.

A. Identical or Confusingly Similar

On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark SOFITEL by reason of its trademark registration as recited in Section 4 above.

Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SOFITEL.

The disputed domain name <china-sofitel.com> embodies the Complainant’s trademark in its entirety. The mere addition of the word of “china” whether having the meaning of “China” as a geographical term or meaning of “china” being a high quality heated clay, followed by a hyphen does not avoid confusing similarity between the disputed domain name and the Complainant’s mark.

It is also well established practice to disregard the gTLD part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.

After removing the said non-distinctive word “china”, the hyphen and the gTLD, only the word “sofitel” is left in its entirety.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.

In the present case, the Complainant has asserted registration and use of the registered trademark SOFITEL well before the Respondent’s registration of the disputed domain name <china-sofitel.com> on December 21, 2017. The Complainant has confirmed that it has no affiliation with the Respondent nor is the Respondent authorized or licensed it to use the trademark SOFITEL in any way.

There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “sofitel” in its domain name.

There is no evidence before the Panel to suggest that the Respondent is commonly known as “china-sofitel.com”.

There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent. The Panel does not consider the use to which the disputed domain name has been put by the Respondent to be bona fide within the meaning of paragraph 4(b)(i) of the Policy.

Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant registered its SOFITEL trademark and has made extensive use of that mark for many years long before the registration of the disputed domain name in 2017. The Respondent has not come forward with any defence on its choice of embodying the word “sofitel” in its entirety as part of the disputed domain name.

The incorporation of the word “sofitel” in its entirety as part of the disputed domain name without any explanation, the prior extensive use and the registration of the Complainant’s mark worldwide (including registration in the Philippines where the Respondent resides) as well as the very extensive use of the domain name <sofitel.com> by the Complainant, which was registered by it on April 11, 1997 to promote its hotel business on the Internet, lead to the conclusion that the Respondent must have been aware of the existence of the Complainant and its trademark SOFITEL at the time of the registration of the disputed domain name.

The inexplicable display of materials from the official website of the Chinese National Assembly of the Fengxian District in Shanghai (most probably without the knowledge and consent of the said authority) on the website at the disputed domain name resolves, which has no relevance to the Respondent, does not support any legitimate or fair use.

The Panel cannot conceive of any use by the Respondent of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use by the Respondent of the disputed domain name. The use of the term “sofitel” in the disputed domain name is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the websites or online locations where the disputed domain name leads to. It is not possible to think of any plausible and genuine use of the disputed domain name by the Respondent.

The Panel finds that the Respondent’s use of the disputed domain name is disruptive of the Complainant’s business, most likely pretextual and to be in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.

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 <china-sofitel.com> be transferred to the first named Complainant, Accor.

C. K. Kwong
Sole Panelist
Date: August 6, 2018