WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Le Han and Mr Johnny
Case No. D2015-0465
1. The Parties
Complainants are Accor and SoLuxury HMC of Paris, France ("Complainant"), represented by Dreyfus & associés, France.
Respondents are Le Han of Viet Nam and Mr Johnny of Singapore.
2. The Domain Names and Registrar
The disputed domain names <novotel-phuquoc.com> and <sofitelso-singapore.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 March 17, 2015. On the same date, Complainant filed an amended Complaint. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on April 13, 2015.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on April 16, 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.
4. Factual Background
Complainant owns numerous trade and service marks worldwide for NOVOTEL and SOFITEL, used in association with its extensive global hotel and hospitality business. Among other registrations, Complainant owns the SOFITEL SO SINGAPORE mark in class 43, Singapore Trademark registration No. T1110803A dated August 4, 2001 and International trademark NOVOTEL in class 43, No. 785645 protected in Viet Nam, dated June 25, 2002.
The disputed domain name <sofitelso-singapore.com> was registered on September 9, 2014, and routes to a website purporting to offer reservations at Complainant's Sofitel So Singapore hotel.
The disputed domain name <novotel-phuquoc.com> was registered on October 31, 2014, and routes to a Vietnamese-language website discussing tourism, development, and Complainant's hotel construction project in Phú Quốc, Viet Nam, also offering a booking service.
5. Parties' Contentions
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain names are confusingly similar to Complainant's trademarks, (2) Respondents have no rights or legitimate interests in the disputed domain names, and (3) the disputed domain names were registered and are being used in bad faith, all in violation of the Policy.
Complainant avers that on October 31, 2014, its attorney was contacted by Respondents with an offer to sell the disputed domain names for a sum in excess of their costs of registration. The text of the email annexed to the Complaint follows: "Hello We are admin of Sofitel So Singapore domain (http://sofitelsosingapore.com) and http://novotelphuquoc.com We transfer this domain 700usd, 2 domain names before we SEO top 1 google and build web Okie we send user, pass first and receive payment later Thanks!"
On the basis of the foregoing allegations, Complainant requests transfer of the disputed domain names.1
Respondents did not reply to Complainant's contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondents via Email
The requirement that a respondent have notice of proceedings that may substantially affect its rights is a fundamental requirement under the Policy. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center was unable to use the address listed in the WhoIs record to transmit Written Notice because Respondents' contact information was inaccurate, failing to provide complete physical addresses. Both Respondents listed the same email address, however, which the Center used to send email notification of these proceedings. This is the same email address apparently used by Respondents in their October 31, 2014 communication offering the disputed domain names for sale to Complainant.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by Respondents to the Registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondents.
B. UDRP Proceeding Involving Multiple Respondents and Disputed Domain Names
The Complaint contends that a single action against the two Respondents in this administrative proceeding is appropriate, suggesting that "Le Han" is the actual registrant and that "Mr. Johnny" is a fictitious name. The Complaint cites ample authority in support of the rule that UDRP panels consistently conclude that the person controlling the domain names at issue should be considered as the respondent even when the WhoIs records list different names. E.g., The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy- -Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069; FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino in this name and under various aliases, WuWeb Pty Ltd, Alichec Inc., Belroots Pty Ltd, Crystal Image Pty Ltd, Elarson & Associates Pty Ltd, Lidnick Webcorp, Liquid SEO Limited, Loshedina Inc, Luchichang Pty Ltd, Netmilo Pty Ltd, Orel Hlasek LLC, Volchar Pty Ltd, Web Pescados LLC, Webatopia Marketing Limited, ZincFusion Limited, Chin-Hui Wu, Domain Administrator, Denholm Borg, Denesh Kumar, Marcelos Vainez, Alex Ovechkin, Vlad Obchikov, WIPO Case No. D2010-1237. The Panel agrees with the consolidation rule applied in each of the cited proceedings. However this line of decisions is generally grounded on findings that a single person (or entity) has used aliases or multiple registrant names.
In the Panel's view, the Complaint does not conclusively establish that "Le Han" and "Mr. Johnny" are in fact the same person.
The Panel nonetheless agrees that a single proceeding is called for here. Whether or not the two listed Respondents are an alias for one person - or simply the names of two persons acting in concert - both registrations use the same email address, and the unitary offer to sell for a single payment both disputed domain names based on Complainants' marks emanated from that same email address.
The Panel construes the Complaint's allegations as a request for consolidation under paragraph 10(e). In accordance with the Panel's ample authority under paragraphs 10(a) and 10(e) of the Rules, the Panel is comfortable permitting consolidation of the two disputed domain names and the listed Respondents in this single proceeding.
C. Substantive Rules
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
For each disputed domain name, Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respective Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondents do not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain names are not identical to Complainant's trademarks, the Panel agrees with Complainant and concludes that the disputed domain names are confusingly similar to Complainant's marks.
The disputed domain name <sofitelso-singapore.com> includes Complainant's entire SOFITEL SO SINGAPORE mark, simply adding a hyphen.
UDRP panels generally disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. The Panel considers the addition of the hyphen to be insignificant and finds that the disputed domain name <sofitelso-singapore.com> is confusingly similar to Complainant's mark.
The disputed domain name <novotel-phuquoc.com> is made up of the simple combination of the Complainant's NOVOTEL mark and the name of Viet Nam's largest island, Phú Quốc.
Many UDRP panels have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name "adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]").
The Panel agrees that the addition of the island's name to Complainant's NOVOTEL trademark does not lessen the confusion between Complainant's marks and the disputed domain name that Internet users would experience. NBC Universal, Inc. v. Web Advertising, Corp. a/k/a Maison Tropicale S.A., WIPO Case No. D2008-0865. Therefore, the Panel finds that the disputed domain name <novotel-phuquoc.com> is also confusingly similar to Complainant's NOVOTEL marks.
The requirements of Policy paragraph 4(a)(i) are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant alleges that Respondents are not affiliated with Complainant, that Respondents did not have authorization to use the trademarks, and that Respondents are not commonly known by the disputed domain names. In the absence of a response by Respondents, the Panel accepts these factual allegations as true.
Complainant also alleges that Respondents do not use the disputed domain names for a bona fide offering of goods or services. The Panel agrees. The websites to which the disputed domain names route purport to provide hotel booking services, however these services are not authorized or affiliated with Complainant, and one offers booking to a hotel for which construction has not yet been completed. Respondents are not actively offering goods or services, or making use of the sites for any sort of other information or commentary that might support a finding of bona fide or fair use.
The Panel finds that the Complaint establishes a prima facie case. Refraining from submitting a response, Respondents have brought to the Panel's attention no circumstances from which the Panel could infer that Respondents have rights or legitimate interests in making use of the disputed domain names.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel also rules that the third element of paragraph 4(a), bad faith registration and use, is established, as follows.
Complainant alleges that Respondents registered the disputed domain names simply for the purpose of selling them to Complainants for valuable consideration in excess of documented out-of-pocket costs. In light of the letter emanating from the email address associated with both Respondents, and the fact that the letter was sent the same day that the second disputed domain name was registered, the Panel agrees.
The Panel finds that Respondents deliberately registered the disputed domain names in order to sell them; the fact that they sought to sell them to Complainant for a sum greater than documented out of pocket costs in this case conclusively establishes bad faith under Policy paragraph 4(b).
The fact that Respondents provided deliberately misleading and incomplete contact information in violation of their registration agreements and that they refrained from responding to the Complaint are further indications of bad faith.
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 <novotel-phuquoc.com> be transferred to Complainant Accord and that the disputed domain name <sofitelso-singapore.com> be transferred to Complainant SoLuxury HMC.
Jeffrey D. Steinhardt
Date: April 26, 2015
1 The Panel finds it unnecessary to discuss the Complaint's considerable additional arguments, case authority, and voluminous documentation respecting Complainant's trademarks and commercial activities.