WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Zeng Zheng
Case No. D2012-1962
1. The Parties
The Complainants are Accor (the “1st Complainant”) and SoLuxury HMC (the “2nd Complainant”) of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zeng Zheng of Guangdong, China.
2. The Domain Name and Registrar
The Disputed Domain Name <gz-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 October 4, 2012. On October 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 5, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on November 19, 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.
It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below.
4. Factual Background
The 1st Complainant is a leader in hospitality services and has been in operations for over 45 years. The 1st Complainant operates over 4,200 hotels in 91 countries under hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS. The 2nd Complainant is a subsidiary of the 1st Complainant.
The 2nd Complainant has set up hotels under the trade mark SOFITEL in 39 countries in Europe, Africa, the Middle East, Pacific Asia, and North and South America. The 1st Complainant operates 19 hotels in China, where the Respondent is located, under the trade mark SOFITEL. 10 of these are in Guangzhou, including “Sofitel Guangzhou Sunrich Hotel”. The 2nd Complainant hosts its website under the address “www.sofitel.com” which provides facilities for online hotel booking.
The Complainants own the following international trade mark registrations for SOFITEL which designate China:
Trade mark number
August 26, 2005
August 30, 2007
The Complainants hold and use various domain names including <sofitel.com> and <sofitel.org>.
In view of the above, this Panel is satisfied that Complainants have a common legal interest to bring this Complaint against the Respondent.
The Disputed Domain Name was registered on April 26, 2012. As of October 2, 2012, the Disputed Domain Name resolved to a website in Chinese which referred to the “Sofitel Guangzhou Sunrich Hotel” and which prominently displayed the trade mark SOFITEL. On June 6, 2012, the Complainant wrote a cease and desist letter to the Respondent. This was followed by reminders on June 22, 2012, July 13, 2012 and August 20, 2012 which the Respondent purported did not reply to.
Other than the WhoIs information relating to the Disputed Domain Name and the Complaint, little information regarding the Respondent is available.
5. Parties’ Contentions
The Complainants contend that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainants’ trade mark SOFITEL. It incorporates the trade mark SOFITEL in its entirety. The additional letters “gz” refers to the geographical term for “Guangzhou” and is not sufficient to distinguish the Disputed Domain Name from the trade mark SOFITEL;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has no prior rights or legitimate interests. The Respondent is not commonly known by the name “Sofitel”. The Respondent is neither affiliated to the Complainants, nor authorized or licensed to use the trade mark SOFITEL. The Respondent did not demonstrate any bona fide offering of services in connection with the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainants when it registered the Disputed Domain Name. The trade mark SOFITEL is well-known throughout the world. The Respondent has not replied to the Complainants’ cease and desist letter and reminders. The website resolved from the Disputed Domain Name offered an online reservation service in Chinese and was made to look like it was an official website of the Complainants by using official photographs without authorisation.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
To succeed in this proceeding, the Complainants have to establish all 3 limbs of paragraph 4(a) of the Policy, namely:
a) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith.
The Panel will proceed to consider each of these 3 limbs in turn.
A. Identical or Confusingly Similar
The Complainants clearly have trade mark rights in the trade mark SOFITEL by virtue of their trade mark registrations. The trade mark SOFITEL is incorporated in its entirety in the Disputed Domain Name. The only difference is the addition of a prefix “gz-” to the Disputed Domain Name. The Panel accepts that the letters “gz” is a natural and convenient short-hand for “Guangzhou”. As a geographical indicator, the Panel holds that it is insufficient to distinguish the Disputed Domain Name from the trade mark SOFITEL. Accordingly, the Panel holds that there is a likelihood of confusion between the Disputed Domain Name and the trade mark SOFITEL. Therefore, the Panel finds that the Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainants have confirmed that they have not authorized the Respondent to use the trade mark SOFITEL. There is also nothing in the evidence to suggest that the Respondent is commonly known by the name “Sofitel”. The website resolved from the Disputed Domain Name appears to offer online reservation services which can hardly, without contrary evidence, be assumed to be noncommercial in nature. As such, it is not foreseeable that the Respondent is making any legitimate noncommercial use of the Disputed Domain Name. The Panel is of the view that the available evidence supports a prima facie finding that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In the absence of a Response, the prima facie finding has not been discharged and the Panel holds that the second limb of paragraph 4(a) of the Policy is made out.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel agrees with the prior UDRP panels which held that the trade mark SOFITEL is well-known. It is inconceivable that the Respondent was unaware of the trade mark SOFITEL. The reference to the Complainants’ hotel “Sofitel Guangzhou Sunrich Hotel” on the website resolved from the Disputed Domain Name confirmed that the Respondent must have been so aware.
Paragraph 4(b)(iv) of the Policy identifies the following example of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location”.
By offering online reservation services, the Respondent’s objective of commercial gain is apparent. The evidence before the Panel does not suggest otherwise. The content of the website evidently portrays itself as being affiliated, sponsored or endorsed by the Complainants. The Respondent must know, in this Panel’s view, that there is a high likelihood that visitors to the website will be misled into believing that the website is associated with the hotels under the trade mark SOFITEL or is authorized by the Complainants. The Panel holds that the circumstances fall within the scenario outlined in paragraph 4(b)(iv) of the Policy and bad faith registration and use of the Disputed Domain Name is established.
Therefore, the Panel finds that the Complainants have satisfied the third element of the Policy.
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 cancelled.
Kar Liang Soh
Date: December 12, 2012