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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Whoisguard Protected, Whoisguard, Inc. / Golding Ernst

Case No. D2015-0492

1. The Parties

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

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Golding Ernst of Sussex, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <sofitellondonheathrow.net> and <sofitelparisladefense.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 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 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2015.

The Center appointed Charles Gielen as the sole panelist in this matter on April 27, 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

The Complainants own and operate several hotels under the trademark and name SOFITEL, protected particularly in relation to hotels and restaurants services.

The Complainants are notably the owners of the following trademark registrations: International Registration SOFITEL, registered on August 26, 2005 under No. 863332, covering services in classes 35, 39 and 43 and International Registration SOFITEL registered on August 30, 2007 under No. 939096 dated of August 30, 2007 covering services in classes 35, 39 and 43.

The disputed domain names <sofitellondonheathrow.net> and <sofitelparisladefense.com> were created on August 18, 2014.

5. Parties’ Contentions

A. Complainant

The Complainants are the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. For more than 45 years, the Complainants have provided customers with expertise acquired in this core business. The Complainants operate more than 3,700 hotels in 92 countries worldwide and over 480,000 rooms, from economy to upscale. The group of companies belonging to the Complainants includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE, SOFITEL and IBIS.

SOFITEL is the luxury trademark of the Complainants and it is the only French luxury hotel brand with a presence on five continents with 120 addresses, in almost 40 countries with more than 30,000 rooms. Under this trademark contemporary hotels and resorts are offered, adapted to today’s more demanding and more versatile consumers who expect and appreciate beauty, quality and excellence.

The Complainants operate 4 hotels in Paris, including the Sofitel Paris la Defense. The fame of the name Sofitel extends to the United Kingdom with three Sofitel-hotels namely Sofitel London Gatwick, Sofitel London St James and Sofitel London Heathrow.

The disputed domain names resolve to parking pages. The Respondent originally hid its identity behind a privacy shield. The Complainants made several attempts to try to resolve this matter in an amicable way by contacting the Respondent. However these attempts remained unanswered.

The Complainants contend that the disputed domain names are confusingly similar to the Complainant’s trademark.

Furthermore the Complainants state that the Respondent for a number of reasons does not have any rights or legitimate interests in the name Sofitel that forms the dominant elements in the disputed domain names; the Respondent is not known under these names and the Respondent does not pretend to own any trademark or other rights in those names. Furthermore the Respondent has not received any consent to use the names. Finally, the disputed domain names resolve to parking pages displaying commercial links in the field of activity of the Complainants. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names. Furthermore, it seems that the Respondent registered the disputed domain names with a privacy shield service to hide his identity and prevent the Complainants from contacting him. Thus, according to the Complainants, such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally the Complainants state that the Respondent registered and uses the disputed domain names in bad faith. The basis for the claim that the registrations were made in bad faith first of all is that the trademarks of the Complainants are well-known, furthermore that it is implausible that the Respondent was unaware of the activities of the Complainants and that it is impossible that the Respondent did not have these trademarks in mind while registering the disputed domain names. The Complainants contend that the disputed domain names were not only registered in bad faith but are also being used in bad faith, because the Complainant tried to get in contact with the Respondent without any reply being given. Also, the Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues. Some of the commercial links are related to hotels and notably those of the Complainants and its competitors. According to the Complainants, the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the policy, because there is no real and substantial offering of products on the websites associated with the disputed domain names. Finally, it is likely that the Respondent registered the disputed domain names to prevent the Complainants from reflecting their trademarks in the disputed domain names.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the contentions of the Complainants are justified and that the disputed domain names should be transferred to the Complainants. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark SOFITEL based on different trademark registrations and it also uses the name “Sofitel”. These trademarks are well-known and the name “Sofitel” enjoys a worldwide reputation. The disputed domain names <sofitellondonheathrow.net> and <sofitelparisladefense.com> combine the trademark SOFITEL with the geographic names London and Paris in connection with known locations in those cities, namely Heathrow and La Defense respectively. The dominant element of the disputed domain names is the distinctive name Sofitel and the trademark and name of the Complainants is therefore very similar to the disputed domain names. The fact that it concerns hotels means that the addition of a location to the name of the hotel enhances likelihood of confusion.

In making the comparison between the trademarks and the disputed domain names the generic Top-Level Domain (“gTLD”) suffixes “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain names should be considered confusingly similar to the trademarks.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainants made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The first reason is that the distinctive name “Sofitel” is not a name one would choose as (part of) a domain name without having specific rights to such a name. The Panel has not been given evidence of any such (Respondent) rights, so it must be held that such rights do not exist. This name certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore the Panel notes that the Respondent has not been granted any rights to use these names as part of the disputed domain names. The Respondent fails to show any intention of noncommercial or fair use of the disputed domain names. Finally, the Respondent registered the disputed domain names with a privacy shield service to hide his identity and prevent the Complainants from contacting him. According to the Panel such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith. The Panel recalls first of all that the trademark of the Complainants and the name “Sofitel” are well-known in the world and in particular also in France and the United Kingdom and do have a strong distinctive character. The trademark and name were used and registered before the disputed domain names were registered. The Panel agrees with the Complainants that it is implausible that the Respondent was unaware of the activities of the Complainants and that it is impossible that the Respondent had not these trademarks in mind while registering the disputed domain names. It must therefore be held that the Respondent knew of the existence of the trademark at the time of its registration. The Respondent by registering the disputed domain names wanted to create a non-existing association with the Complainants and their services. In view of the above it must be held that the disputed domain names were registered in bad faith.

Also the use of the disputed domain names is bad faith use, not only since the attempts of the Complainants to be in touch with the Respondent failed because the Respondent did not reply to these attempts, but also because the websites associated with the disputed domain names do not show any (legitimate) offering of goods or services. The websites under the disputed domain names display pay-per-click links which are likely to generate revenues. Some of the commercial links are related to hotels and notably those of the Complainants and its competitors. The Panel is of the opinion that such use is bad faith use, since the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. Finally, the use of the disputed domain names could result in consumers being deceived or confused as to the origin of the websites associated with the disputed domain names.

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

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 disputed domain names be transferred to the Complainants.

Charles Gielen
Sole Panelist
Date: April 28, 2015

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