WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Choice Products International Pty Ltd

Case No. D2012-0166

1. The Parties

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

The Respondent is Choice Products International Pty Ltd of Sydney, New South Wales, Australia.

2. The Domain Names and Registrar

The disputed domain names: <pullmanhotellimo.com>, <pullmanlimousine.com>, <pullmanshotel.com>, <pullmanslimo.com>, <sofitellimo.com> and <sofitellimousine.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2012. On January 31, 2012, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On January 31, 2012, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

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 February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2012.

The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on March 12, 2012. 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 has operated, for many years, thousands of hotels worldwide, from economy to upscale. This Complainant and its subsidiaries owns hotel chains such as Pullman, Novotel, Mercure and Ibis. Pullman is the upscale hotel brand of Accor. The Complainant operates the website “www.pullmanhotels.com”, where Internet users can find and book rooms in its hotels.

The Complainant Accor owns several trademark registrations including PULLMAN for hotel related services, among which are:

- International Registration No. 937197 for PULLMAN HOTELS & RESORTS & design registered July 24, 2007, designating Australia and covering goods and services of classes 16, 39 and 43;

- Australian Registration No 1293832 for PULLMAN HOTELS & RESORTS & design, registered July 24, 2007, covering services of class 43.

The Complainant SoLuxury HMC is a subsidiary of Accor. SoLuxury operates the well-known luxury hotel chain Sofitel. SOFITEL hotels are established in 52 countries throughout the world. In a number of SOFITEL hotels, a limousine transportation service is provided. SoLuxury operates the website “www.sofitel.com”, where Internet users may find and book rooms in its hotels.

SoLuxury owns several trademark registrations for the term SOFITEL, among which:

- International Trademark No. 939096 for SOFITEL (word in stylized form) registered August 30, 2007, designating Australia and covering services of classes 35, 36, 43 and 44;

- Australian Registration No. 1207672 for SOFITEL (word in stylized form), registered August 30, 2007, covering services of classes 35, 36, 43 and 44.

The Complainants operates four SOFITEL hotels and two PULLMAN hotels in Australia.

The disputed domain names were registered in the course of 2008, namely: <pullmanshotel.com> on March 15, 2008, <pullmanhotellimo.com> on May 10, 2008, <pullmanslimo.com> on May 10, 2008, <pullmanlimousine.com> on May 10, 2008, <sofitellimo.com> on August 23, 2008 and <sofitellimousine.com> on August 23, 2008.

The Respondent has used the disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> in connection with parking pages displaying sponsored links related to hotels. The disputed domain names <sofitellimo.com> and <sofitellimousine.com> appear to have remained inactive.

After becoming aware of the registration of the first disputed domain name <pullmanshotel.com> and of its use in connection with a parking page featuring sponsored links related to hotels, the Complainants sent a cease-and-desist letter to the Respondent on May 6, 2008. The Respondent answered a few days later that it would get back to the Complainants, but in fact never did so despite several reminders sent by the Complainants. However, the Respondent redirected the disputed domain name <pullmanshotel.com> to a “waiting” page.

The Complainants sent a second cease-and-desist letter to the Respondent on March 3, 2009, after becoming aware of the registration and use of the other disputed domain names. The Respondent never replied, despite several reminders, the last of which was sent on April 6, 2009.

As of today, the disputed domain name <pullmanshotel.com> resolves to a waiting page. The disputed domain names <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> resolve to parking pages displaying sponsored links related to hotels. The disputed domain names <sofitellimo.com> and <sofitellimousine.com> are inactive.

5. Parties’ Contentions

A. Complainants

First, the Complainants contend that the disputed domain names are identical or at least confusingly similar to their trademarks, as they reproduce the terms PULLMAN and SOFITEL in their entirety and associate such terms with generic terms referring to the Complainants’ main business.

Second, the Complainants assert that the Respondent is not affiliated with them and has not been authorized by them to register or use any of the disputed domain names. The Complainants contend also that the disputed domain names are so identical to the Complainants’ well-known marks that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain names. Furthermore, the Complainants contend that the Respondent is not known by any of the disputed domain names and did not demonstrate any use or preparations to use the disputed domain names in connection with a bona fide offering of goods or services before receiving any notice of the dispute. The Complainants assert as a consequence that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Third, the Complainants contend that the disputed domain names were registered and used in bad faith. Indeed it is implausible, according to the Complainants, that the Respondent was unaware of the Complainants’ trademarks when it registered the disputed domain names because such trademarks are well-known and are associated in the disputed domain names with generic terms referring to the Complainants’ business. The Complainants further assert that the Respondent has used or is using the disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> for the purpose of generating pay-per-click revenue from the diversion of Internet users, a behavior amounting to registration and use in bad faith. With respect to the disputed domain names <sofitellimo.com> and <sofitellimousine.com>, which have remained inactive, the conditions are met for a finding of passive holding in bad faith according to the Complainants. Finally, the Complainants consider it likely that the Respondent registered the disputed domain names to prevent the Complainants from reflecting their trademarks in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must assert and prove each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant Accor has established that it has rights to word/design trademark registrations in which the term “Pullman” is predominantly featured.

For the purpose of assessing the similarity between the Complainant's trademarks and the disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com>, it is appropriate to compare the term “pullman” to these disputed domain names, and to leave aside the terms “hotels and resorts” and the design elements of the trademarks, as “it is a matter of impression in each case as to whether a domain name can be confusingly similar to a trade mark that includes a logo or graphic element” (Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton, WIPO Case No. D2010-0509). Here, the term “Pullman” is indeed depicted in much bigger characters than the terms “hotels and resorts” featured in very small print underneath. Moreover, the terms “hotels and resorts” are purely descriptive of the services claimed, so that they have little influence on the general impression produced by the trademarks. Likewise, the design elements of the Complainant’s trademarks may be ignored in this context, as they are not particularly striking compared to the word element “pullman”.

The disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> reproduce the term “pullman” in its entirety, and combine it with either the term "hotel" and/or the term "limousine" (or its short form "limo"). These terms are generic and devoid of distinctiveness. Far from lessening a likelihood of confusion with the Complainant's trademarks, the presence of these terms only reinforces the similarity between the domain disputed names and the trademarks, as they are closely related to the fields of business of the Complainant. Indeed, limousine services are often provided in upscale hotels, and may be considered as accessory services to hotel services.

The same is true of the trademarks SOFITEL of the Complainant SoLuxury and the disputed domain names <sofitellimo.com> and <sofitellimousine.com>. These disputed domain names reproduce the distinctive term and trademark SOFITEL in its entirety, and combine it with the terms "limo" or "limousine", a kind of service offered by the Complainant.

It is the general view among WIPO panels that the addition of merely generic, descriptive, or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see for example Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. The Complainants have thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainants, nor have the Complainants granted to the Respondent an authorization to use their trademarks in the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to the Respondent’s name.

The Complainants have provided evidence showing that the Respondent has used the disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> in connection with websites featuring sponsored links. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is not evidence of any rights or legitimate interests (see Woolworths Limited v. Domain Admin / PrivacyProtect.org / Smvs Consultancy Privacy Limited, WIPO Case No. D2010-1046; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; and Mayflower Transit LLC v. Domains by Proxy Inc. / Yariv Moshe, WIPO Case No. D2007-1695).

Furthermore, nothing in the file contains any indication that the Respondent could claim any legitimate interest to the inactive domain names <sofitellimo.com> and <sofitellimousine.com>.

Furthermore, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainants’ assertion that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Complainants have thus satisfied the condition set forth in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent most probably knew of the Complainants’ trademarks when it registered the six disputed domain names, and that the choice of the terms “pullman” and “sofitel” is not a coincidence. The association of these terms with generic words referring directly to the Complainants’ services show in the Panel’s view that the Respondent was aware of the Complainants’ activities. If the Respondent had any doubt about the protection of the terms “Sofitel” and “Pullman” to designate hotel-related services, a simple trademark search would have revealed the Complainants’ trademark registrations.

Furthermore, the Respondent has used the disputed domain names <pullmanshotel.com>, <pullmanhotellimo.com>, <pullmanslimo.com> and <pullmanlimousine.com> in connection with websites featuring sponsored links that relate to hotels, whereas the Complainants have been operating hotels for many years and offering limousine services. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainants’ trademarks.

Such conduct constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).

With respect to the disputed domain names <sofitellimo.com> and <sofitellimousine.com>, the Respondent seems to have hold them passively without connecting them to any active website. Passive holding of a domain name may however be considered use in bad faith in certain circumstances. Such particular circumstances include, for instance, a high level of notoriety of the complainant’s trademark, the lack of any evidence that the Respondent contemplated a good faith use of the domain name, the absence of a response to the complaint and the respondent’s concealment of its identity (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

In the case at hand, the trademark SOFITEL enjoys a high level of recognition worldwide. The Respondent has not provided any explanation about the purpose of the registrations of the domain names <sofitellimo.com> and <sofitellimousine.com>. Moreover, after acknowledging receipt of the Complainants’ first cease-and-desist letter in May 2008, the Respondent left all the following communications from the Complainants unanswered. The Panel considers that this set of circumstances is sufficient to consider that the passive holding of the disputed domain names amounts to use in bad fait within the meaning of paragraph 4(i)(iii) of the Policy.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, and that the Complainants have satisfied the condition set forth in 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 domain names <pullmanhotellimo.com>, <pullmanlimousine.com>, <pullmanshotel.com>, <pullmanslimo.com>, <sofitellimo.com> and <sofitellimousine.com> be cancelled.

Anne-Virginie La Spada-Gaide
Sole Panelist
Dated: March 26, 2012