WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, So Luxury HMC v. Youness Itsmail
Case No. D2015-0287
1. The Parties
The Complainants are Accor and So Luxury HMC of Paris, France (the "Complainant"), represented by Dreyfus & associés, France.
The Respondent is Youness Itsmail of Sherbrook, Canada (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <sofitel.holiday> ("the Domain Name") is registered with Sibername Internet and Software Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2015. On February 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24 and 27, 2015, 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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2015.
The Center appointed Ellen B Shankman as the sole panelist in this matter on March 30, 2015. 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.
On March 31, 2015 and April 2, 2015, the Center received two email communications from the Respondent in French language.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be April 27, 2014. The Complainant provided evidence of multiple trademark registrations for the mark SOFITEL including, inter alia, in the United States of America (registered on October 15, 1974), the International Trademark (registered on August 30, 2007), and the Canadian trademark (registered on July 19, 2010), that predate the date of the Domain Name registration.
The Panel also conducted an independent search to determine that the Domain Name currently has an error message and does not resolve to a particular website.
Because there is no formal response, the facts regarding the use and fame of the mark, as well as the statements regarding the communication the Complainant had with the Respondent in response to the Cease & Desist letter sent, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complainant provided evidence of trademark registration for the mark SOFITEL that predates the date of registration of the Domain Name.
Further, the Complainant claims that it has used the mark in commerce: "SOFITEL, the luxury trademark of the Accor's subsidiary SoLuxury HMC, is the only French luxury hotel brand with a presence on five continents with 120 addresses, in almost 40 countries (more than 30,000 rooms)."
The record does contain evidence of the use. The trademark SOFITEL appears to have been in use for nearly forty-five years in connection with offering "contemporary hotels and resorts adapted to today's more demanding and more versatile consumers who expect and appreciate beauty, quality and excellence."
The Complainant contends, inter alia, the following facts and arguments:
The Complainant is notably the owner of the following trademark registrations:
"International trademark SOFITEL n° 863332 dated of August 26, 2005 covering services in class 35, 39 and 43; Canadian trademark n° TMA772322 dated of July 19, 2010.
In addition, Complainant[s] operate, among others, domain names reflecting their Trademarks: <sofitel.com> registered on June 13, 2012; <sofitel.ca> registered on January 30, 2003. [ …]"
The Complainant also claims, "[T]he domain name <sofitel.holiday> reproduces Complainants' trademark SOFITEL in its entirety, which previous panels have considered to be very well-known in the field of hotels (Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650; Accor, SoLuxury HMC v. Ha Viet Cuong, WIPO Case No. D2014-1366; Accor, SoLuxury HMC v. Huxianfeng, WIPO Case No. D2014-1326; Accor, SoLuxury HMC v. Zeng Zheng, WIPO Case No. D2013-1541; Accor, SoLuxury HMC v. Yin Wei Fen, WIPO Case No. D2012-0553; and Accor and SoLuxury HMC v. "m on", WIPO Case No. D2012-2262).
In many UDRP decisions, the Panels considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainants' registered mark (Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, domain Admin, WIPO Case No. D2010-1059). Likewise, the Domain Name <sofitel.holiday> is virtually identical to Complainants' domain name <sofitel.com>. Accordingly, by registering said domain name, the Respondent created a likelihood of confusion with Complainants' trademark and domain name. It is likely that this domain name could mislead Internet users into thinking that this is, in some way, associated with Complainants".
The Complainant further claims: "The disputed domain name <sofitel.holiday> has been registered in the gTLD <.holiday>. The gTLD used for the registration of a domain name has no influence on the assessment of the similarity between the domain names and the Complainant's trademarks merely because it is necessary for the registration of the domain name itself (IndiaMART InterMESH Limited v. Personal, Manoj Nair/WhoisGuard, WIPO Case No. DTV2011-0003; and L'Oréal v. Guowei Hai Gui, WIPO Case No. D2011-0775. "
"On August 8, 2014, Complainant[s] sent a cease-and-desist letter to the registrant via registered letter and e-mail on the basis of their trademark rights. The cease-and-desist letter requested Respondent to transfer the domain name <sofitel.holiday> to Complainant[s]".
The Complainant alleges, "[O]n November 27, 2014, Respondent replied to Complainants and offered to sell them the disputed domain name at EUR 26 000. He also informed Complainants that if he received no reply before December 15, 2014, he would sell the domain name to another person located in Africa".
To summarize the Complaint, the Complainant is the owner of the world wide registered trademark SOFITEL. The Domain Name is confusingly similar to the trademark owned by the Complainant. The Domain Name was registered and is being used in bad faith. Additionally, the Respondent does not make any use of the Domain Name presently since the Domain Name resolves to an inactive website. Further, after sending a demand letter, the Respondent offered to sell the Domain Name to the Complainant for an exorbitant sum of money and threatened to sell the Domain Name to a third party if the sum was not paid. This demonstrates a lack of legitimate interests regarding said Domain Name, and suggests evident bad faith behind the registration. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy.
The Respondent did not reply to the Complainant's contentions. However, on March 31, 2015 and April 2, 2015, the Center received two email communications from the Respondent in French stating it did not understand English and asking whether it would be possible to receive the information in French and offering the Domain Name to sale for a "reasonable amount of money".
The Panel has considered the Respondent's communication, but considers it to be more likely than not merely a tactic to delay the procedure.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the first requirement that the Domain Name <sofitel.holiday> is identical or confusingly similar to the Complainant's registered trademark SOFITEL, under paragraph 4(a)(i) of the Policy.
The Domain Name string contains the identical string for "sofitel" in its entirely, and the Domain Name string contains the trademark of the Complainant. If anything, the generic Top-Level Domain ("gTLD") extension ".holiday" underscores an attempted connection by the Respondent to the trademark of the Complainant.
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SOFITEL, and these rights precede the date of the Respondent's obtaining the Domain Name.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the Domain Name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed Domain Name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. See, Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. Angelos Ellinas, WIPO Case No. D2015-0217.
The Complainant asserts, "Respondent is not affiliated with Complainants in any way nor has he been authorised by Complainants to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interest in the domain name. The registration of the SOFITEL trademark preceded the registration of the disputed domain name for years".
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant argues:
"Respondent's reproduction of the trademark SOFITEL clearly proves that Respondent was aware of the existence of Complainants' trademark. It has been held in previous cases that knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464)"
"Additionally, a quick SOFITEL trademark search would have revealed to Respondent the existence of Complainants and its trademark. Respondent's failure to do so is a contributory factor to its bad faith" (Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226).
The Complainant further argues: "Previous panels have considered that in the absence of any license or permission from Complainants to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). As the disputed domain name is confusingly similar to Complainants' trademark, previous Panels have ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant's site to Respondent's site" (MasterCard International Incorporated ("MasterCard") v. Wavepass AS, WIPO Case No. D2012-1765; Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
The Domain Name <sofitel.holiday> is currently inactive. Nevertheless, this state of inactivity does not mean that the Domain Name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: "A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose" (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421)"
"Previous Panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondent's behaviour (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)".
"In Telstra Corporation Limited v. Nuclear Marshmallows, the Panel concluded that Respondent's passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because: (1) the Complainant's trademark had a strong reputation and was widely known; (2) Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement".
"Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. Respondent's immediate offer to sell the domain name despite having being summoned to transfer the domain name to Complainant free of charge through a cease-and-desist letter, without giving any reasons why he had registered the domain name or without contesting Complainant's trademark, are clear indications that he was aware of Complainant's trademark when he registered the disputed domain name. Indeed, Respondent has attempted to sell the domain name for a sum of EUR 26 000 which is in excess of the Respondent's out of pocket expenses in registering the domain name".
"This behaviour is a strong indication that the Respondent hoped to sell the domain name to the Complainant or to a competitor of Complainant which is a clear evidence of registration and use in bad faith".
The Panel finds these facts and arguments persuasive.
Given the evidence of the Complainant's prior rights in the mark, the timing of the registration of the Domain Name in the ".holiday" gTLD for a trademark associated with a well-known hotel, together with evidence of the use of the mark in the Domain Name that resolves to an inactive website would suffice to satisfy the requirement that the mark was registered and used in bad-faith. The additional information, which was unrefuted by the Respondent and which is generally accepted as true in the circumstances of this case, that the Respondent made an offer to sell the Domain Name for excessive costs or threaten to sell it to a third party, supports this conclusion and the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <sofitel.holiday> be transferred to the Complainant.
Ellen B Shankman
Date: April 13, 2015