WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. “m on”

Case No. D2012-2262

1. The Parties

The Complainant is Accor of Paris, France and SoLuxury HMC of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is “m on” of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com>, <sofitelhyland.com> and

<sofitelhylandhotel.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 16, 2012. On November 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 November 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2012.

The Center appointed Daniel Peña as the sole panelist in this matter on December 18, 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 in this case is Accor and its subsidiary SoLuxury HMC.

Accor is one of the world leaders in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. It operates more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, from economy to upscale. The group includes notable hotel chains such as Accor, Novotel, Mercure and Ibis, which are widely recognized around the world for their service quality.

SoLuxury HMC is the owner of Sofitel, a luxury hotel chain established in 39 countries in the world.

The Complainant operates 29 hotels in China, 19 Sofitel and 10 Novotel, of which 13 are located in Shanghai, China, such as “Sofitel Shanghai Hyland Hotel”, the “Novotel Shanghai Atlantis” and the “Sofitel Shanghai Sheshan Oriental Hotel”.

The Complainant is the owner of the following International Trademark Registrations:

Accor:

- ACCOR, International Trademark No. 953507 dated of August 16, 2007, covering services in classes 9, 16, 35, 36, 41 and 43;

- NOVOTEL, International Trademark No. 785645 dated of June 25, 2002, duly renewed, covering services in class 43;

- NOVOTEL, International Trademark No. 875041 dated of December 9, 2005, covering services in class 43.

SoLuxury HMC:

- SOFITEL, International Trademark No. 939096 dated of August 30, 2007, covering services in classes 35, 36, 43 and 44;

- SOFITEL, International Trademark No. 863332 dated of August 26, 2005, covering services in classes 35, 39 and 43.

The trademarks SOFITEL, ACCOR and NOVOTEL are worldwide well-known trademarks, related to hotel and restaurant services.

The Complainant operates, among others, the following domain names, which reflect its trademarks:

- <accorhotels.com> created on July 13, 2012;

- <novotel.com> created on April 10, 1997;

- <novotel.net> created on April 2, 2000;

- <novotel.org> created on May 21, 2003;

- <sofitel.com> created on April 11, 1997;

- <sofitel.org> created on April 30, 2001.

The disputed domain names were created on the dates indicated as follows:

- <novotelatlantishotel.com>, February 2, 2010;

- <shaccorhotel.com>, February 6, 2010;

- <sofitelhyland.com> , February 2, 2010;

- <sofitelhylandhotel.com>, February 2, 2010.

The Complainant sent a cease-and-desist letter via email on July 20, 2012 to the Respondent based on its trademark rights, asking the latter to cancel the litigious domain names. Then, it sent several reminders but the Respondent never replied.

The disputed domain names <novotelatlantishotel.com>, <sofitelhylandhotel.com> and <shaccorhotel.com> are currently inactive, regarding the fact that the hosting company for them removed the websites, pursuant to the direct request of the Complainant. The disputed domain name <sofitelhyland.com> appears to have always been inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights over the trademarks ACCOR, NOVOTEL and SOFITEL.

The Complainant argues that it registered certain domain names reflecting its trademarks. These domain names consist of ACCOR, NOVOTEL and SOFITEL trademarks.

The Complainant emphasizes that the trademarks ACCOR, SOFITEL and NOVOTEL are well-known trademarks, related to hotel and restaurant services.

The Complainant states that the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com>, <sofitelhyland.com> and <sofitelhylandhotel.com> are confusingly similar to the Complainant´s trademarks ACCOR, NOVOTEL and SOFITEL, regarding that the disputed domain names reproduce the mentioned trademarks in their entirety. The Complainant considers this fact as sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s trademarks.

The Complainant notes that the mere addition of the terms “atlantis”, “hyland” and “sh” used in the disputed domain names, is not sufficient to distinguish the disputed domain names from the Complainant’s ACCOR, NOVOTEL and SOFITEL trademarks since they directly refer to, respectively, the “Novotel Shanghai Atlantis”, “Sofitel Shanghai Sheshan Oriental Hotel” and the “Sofitel Shanghai Hyland Hotel” (the Complainant’s hotels located in Shanghai, China). Therefore, the Complainant considers that those terms and letters have to be considered as geographical terms since their only purpose is to identify precisely the Complainant’s hotels location.

Moreover, the Complainant states that the adjunction of the generic and descriptive word “hotel” used in the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com> to the trademark and company name, is insufficient to give any distinctiveness to the disputed domain names. Indeed, the added term is a common English word. On the contrary, the Complainant considers that such adjunction is likely to increase the existing risk of confusion as it describes its main business.

The Complainant concludes from this fact, that, at registering the disputed domain names, the Respondent has created a likelihood of confusion with its trademarks, regarding that the public could reasonably assume that the disputed domain names would be owned by the Complainant. Finally, the Complainant notes that the mere addition of the gTLD “.com” is irrelevant.

As a result of the arguments above, the Complainant considers that the disputed domain names are identical or confusingly similar to its trademarks ACCOR, NOVOTEL and SOFITEL. Thus, the condition of paragraph 4(a)(i) of the UDRP is fulfilled.

Regarding the paragraph 4(a)(ii) of the UDRP, the Complainant argues that the Respondent has no prior rights or legitimate interests in the disputed domain names, bearing in mind that:

- The registration of the ACCOR, NOVOTEL and SOFITEL trademarks preceded the registration of the disputed domain names for years.

- The disputed domain names are so similar to the well-known ACCOR, NOVOTEL and SOFITEL trademarks, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names.

- The Respondent is not commonly known by the name “accor, “novotel” or “sofitel”, in any way affiliated with the Complainant, nor authorized or licensed to use the said trademarks or to seek registration of any domain names incorporating said trademarks. This behavior reveals absence of bona fide or legitimate use of the disputed domain names.

- The Respondent did not demonstrate use or preparations to use the disputed domain names in connection with a bona fide offering of services. The Respondent used the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com>, which included a false presentation of the Complainant’s hotels in Shanghai, China. This demonstrates that the Respondent cannot have ignored the Complainant’s trademarks.

- The terms “accor”, “novotel” and “sofitel” have no meaning in Chinese.

- The Respondent never replied to the cease and desist letter. It can be assumed that the Respondent has no rights or legitimate interests in the disputed domain names.

In accordance with paragraphs 4(a)(iii) and 4(b) of the UDRP, the Complainant argues that the Respondent had bad faith in the registration and in the use of the disputed domain names, considering that the trademarks NOVOTEL, ACCOR and SOFITEL are well-known trademarks around the world, and the Respondent could not have reasonably ignored the Complainant’s rights on the trademarks, when registered the disputed domain names.

The Complainant sets that the lack of reply of the Respondent before the cease and desist letters and reminders, evidences its bad faith.

The Complainant argues that the Respondent was using the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com> to direct Internet users to websites in Chinese containing a nonofficial presentation of the Complainant’s hotels in Shanghai, China, leads to an association between the Complainant’s trademarks and its services which demonstrates the knowledge of the Respondent about the trademarks.

The likelihood of confusion created by the Respondent will result in a diversion of Internet traffic from the Complainant’s site to the Respondent’s site, making the public believe that the websites under the referred dispute domain names are official.

Regarding the disputed domain name <sofitelhyland.com>, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name as it is inactive, what must be considered as a use in bad faith, attending to the other circumstances of the case, as the ones presented herein: a well-known trademark, no evidence of good faith on the Respondent, the Respondent concealing its true identity and providing false contact details, and being the owner of the other disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com> as stated above and it is very likely that the Respondent is currently developing another false presentation for the disputed domain name <sofitelhyland.com>.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain names be transferred:

(1) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which the Complainant has rights.

According to the evidence, ACCOR, NOVOTEL and SOFITEL are trademarks duly registered and well-known throughout the world, owned by the Complainant, who has developed important goodwill in the mentioned trademarks.

In this Panel’s view the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com>, <sofitelhyland.com> and <sofitelhylandhotel.com> are confusingly similar to the Complainant’s trademarks NOVOTEL, ACCOR and SOFITEL, whereas the addition of a term referred to the geographical location, or to a common word coincident with the core business of the Complainant, as detailed below, is not sufficient to eliminate confusion, on the contrary, tends to increase it.

Herein, the Panel highlights the differences between the trademarks NOVOTEL, ACCOR and SOFITEL, and the disputed domain names:

NOVOTEL

<novotelatlantishotel.com>

It is proved that the trademark is entirely reproduced in the disputed domain name. The reference to “atlantis” is related to the geographical location of the hotel, according to the evidence. The word “hotel” refers to the main business of the Complainant developed through the trademark.

ACCOR

<shaccorhotel.com>

It is proved that the trademark is entirely reproduced in the disputed domain name. The reference to “sh” is related to the geographical location of the hotel, according to the evidence. The word “hotel” refers to the main business of the Complainant developed through the trademark.

SOFITEL

<sofitelhyland.com>

It is proved that the trademark is entirely reproduced in the disputed domain name. The reference to “hyland” is related to the geographical location of the hotel, according to the evidence.

<sofitelhylandhotel.com>

It is proved that the trademark is entirely reproduced in the disputed domain name. The reference to “hyland” is related to the geographical location of the hotel, according to the evidence. The word “hotel” refers to the main business of the Complainant developed through the trademark.

The Panel concludes that the disputed domain names are confusingly similar to the Complainant´s trademarks.

Accordingly, the Panel finds that the Complainant has established the first requirement under the UDRP.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a) (ii) of the UDRP, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant bears the burden of establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain names.

However, the Panel considers relevant and necessary an examination of the Complainant's arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names.

Thereby, regarding that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademarks ACCOR, NOVOTEL and SOFITEL, as well as the fact that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute, and also that the Respondent has not been commonly known by the disputed domain names, what cannot be considered as a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.

This, together with the other arguments stated by the Complainant, related to the fact that the registrations of the disputed domain names were made after the registration of the Complainant’s well-known trademarks, the similarity between them, and the lack of reply of the Respondent to the cease and desist letter from the Complainant in relation to the disputed domain names, allows this Panel find that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Panel concludes from the evidence provided by the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain names. Therefore, the Panel considers that the requirements of paragraph 4(a)(ii) of the UDRP are fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the UDRP sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the UDRP, i.e.:

“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location”.

However, this list is illustrative and there may be other circumstances that could constitute evidence of the registration and use of a domain name in bad faith.

According to the evidence, the registration of the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com> made by the Respondent, bearing in mind that it could not have reasonably ignored the existence of the Complainant’s well-known trademarks ACCOR, NOVOTEL and SOFITEL, as well as the lack of reply of the Respondent before the cease and desist letter and reminders, and the likelihood of confusion created by the Respondent at directing Internet users to websites in Chinese containing a nonofficial presentation of the Complainant’s hotels in Shanghai, China, could result in a diversion of Internet traffic from the Complainant’s site to the Respondent’s site, and the consumers would be confused believing that the websites under the referred dispute domain names, are the official, allow the Panel infer that these disputed domain names have been registered and are being used in bad faith.

Regarding the disputed domain name <sofitelhyland.com>, which appears to have always been inactive, considering the circumstances of: (i) the character of well-known trademarks of the Complainant, which could not have been ignored by the Respondent; (ii) the lack of response of the Respondent before the cease and desist letter sent by the Complainant; (iii) the identity of the Respondent as owner of the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com> and <sofitelhylandhotel.com> which have been registered and used in bad faith, together with the inactivity, allow the Panel consider that the mentioned disputed domain name has been registered and is being used in bad faith.

Based on the above, including the Respondent’s lack of rights or legitimate interests in the disputed domain names, the Panel concludes that the requirements of paragraph 4(a)(iii) of the UDRP are fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4 (i) of the UDRP and 15 of the Rules, the Panel orders that the disputed domain names <novotelatlantishotel.com>, <shaccorhotel.com>, <sofitelhyland.com> and <sofitelhylandhotel.com> be cancelled.

Daniel Peña
Sole Panelist
Date: January 1, 2013