WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Paul Botterill
Case No. D2015-0513
1. The Parties
The Complainants are Accor and SoLuxury HMC, both of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Paul Botterill of Singapore.
2. The Domain Name and Registrar
The disputed domain names are <sofitelso.com>, <sofitelsosingapore.com> and <sosofitel.com> and 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 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 25, 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 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2015.
The Center appointed Charles Gielen as the sole panelist in this matter on April 23, 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 trademarks SOFITEL, SO BY SOFITEL and SOFITEL SO SINGAPORE, protected particularly in relation to hotels and restaurants services.
The Complainants are notably the owners of the following trademark registrations: International registration of the trademark SOFITEL, registered under No. 863332 and protected in Singapore since August 26, 2005, covering services in classes 35, 39 and 43; International registration of the trademark SO BY SOFITEL registered under No. 927545 on April 23, 2007, covering goods and services in classes 16 and 43; International registration SO BY SOFITEL registered under No. 970373 on May 13, 2008, covering goods and services in classes 16, 20, 21, 24, 25, 35 and 43 and Singapore registration SOFITEL SO SINGAPORE No. T1110803A registered on August 4, 2001 covering services in class 43.
The disputed domain names <sofitelso.com>, <sofitelsosingapore.com> and <sosofitel.com> were registered on September 26, 2012.
5. Parties’ Contentions
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 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.
Built on the renown of the luxury hotels under the name Sofitel and its unique identity that is a subtle blend of French luxury and the best aspects of local culture, the trademark SOFITEL SO is used to distinguish the new “designer boutique hotel” label epitomized by ultra-contemporary style in trendy destinations. The chic, contemporary style under the trademark and name SOFITEL SO is the result of an alliance between Sofitel’s famous “art de vivre” and the signature of an internationally renowned designer from the worlds of art of fashion. It reflects and enhances the very essence of a place. Mr. Kenzo Takada was for instance the artistic director at Sofitel So Mauritius, while Mr. Christian Lacroix put his signature on Sofitel So Bangkok in Thailand.
The Complainants have one Sofitel hotel and one Sofitel So hotel in Singapore.
The disputed domain names previously resolved to parking pages. Now, after the Complainants made several attempts to try to resolve this matter in an amicable way by contacting the Respondent, the disputed domain names direct towards inactive pages. These attempts remain unanswered.
The Complainants contend that the disputed domain names are confusingly similar to the Complainant’s trademarks.
Furthermore the Complainants state that the Respondent for a number of reasons does not have any rights or legitimate interests in the name Sofitelso, Sofitelsosingapore and Sosofitel that form 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 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 had not 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 Complainants tried to get in contact with the Respondent without any reply being given, because there is no real and substantial offering of products on the websites associated with the disputed domain names. Before sending the cease and desist letter, the disputed domain names used to resolve towards parking pages displaying commercial links and by doing so, the Respondent has been taking undue advantage of the Complainants’ trademarks to generate profits. The disputed domain names presently resolve to inactive pages. The Complainants are of the opinion that passive holding results in bad faith use. Finally, it is likely that the Respondent registered the disputed domain names to prevent the Complainants from using their trademarks in the disputed domain names.
The Respondent did not reply to the Complainants’ 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 Complainants prove that they have rights in the trademarks SOFITEL, SO BY SOFITEL and SOFITEL SO SINGAPORE based on different trademark registrations and they also use the name Sofitel So. These trademarks are well-known and the name Sofitel So enjoys a big reputation. The disputed domain names <sofitelso.com> and <sosofitel.com> combine the trademark SOFITEL and the word “so” that forms part of the trademark SO BY SOFITEL and SOFITEL SO SINGAPORE and are therefore very similar. Furthermore the disputed domain name <sofitelso.com> contains the identical name Sofitel So used by the Complainants for their chiq boutique hotels. The domain name <sofitelsosingapore.com> contains the identical mark SOFITEL SO SINGAPORE. 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 are confusingly similar to the Complainants’ 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 names “Sofitel” or “Sofitel So” are not names 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’s) rights, so it must be held that such rights do not exist. These names certainly are not descriptive terms 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.
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 trademarks of the Complainants and the name “Sofitel So” are well-known in the world and in particular in Singapore and do have a strong distinctive character. The trademarks 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 the registration of the disputed domain names. 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 disputed domain names are being used in bad faith, The Panel finds that both the parking pages and the inactive websites are evidence of bad faith. The fact that the Respondent did not reply to Complainant’s contact attempts, but also because the websites associated with the disputed domain names do not show any (legitimate) offering of goods or services and do not present any other serious activity are further evidence of bad faith to this panel. 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.
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 <sofitelso.com>, <sofitelsosingapore.com> and <sosofitel.com> be transferred to the Complainant SoLuxury HMC.
Date: April 30, 2015