WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Leo Joseph
Case No. D2015-0846
1. The Parties
Complainants are Accor and SoLuxury HMC of Paris, France (“Complainant”), represented by Dreyfus & Associés, France.
Respondent is Leo Joseph of Santa Maria, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sofitelstjame.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2015. On May 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 18, 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 Accor holds a chain of hotels for over 45 years, operating more than 3,600 hotels in 92 countries worldwide. Complainant’s hotel chain comprehends not only economic and mid-scale hotels, but also luxury hospitality services.
Complainant Accor is part of the same group as Pullman, Novotel, Mercure, Sofitel and Ibis, and its subsidiary SoLuxury HMC, a co-complainant in the present dispute, alongside with Accor. The Panel will hereinafter jointly refer to Accor and SoLuxury HMC as “Complainant”.
Complainant owns trademark registrations for the SOFITEL trademark, which is used by SoLuxury HMC (Accor’s subsidiary) such as US trademark no. 0995968 registered on October 15, 1974, in class 42, International trademark SOFITEL no. 863332 registered on August 26, 2005, protected in the United States in classes 35, 39 and 43, and International trademark SOFITEL no. 939096 registered on August 30, 2007, also protected in the United States in classes 35, 39, 43 and 44 (as per Annex 7 of the Complaint).
Besides owning the domain name <sofitel.com> since April 11, 1997, Complainant owns other domain names such as <sofitel.us>, registered on April 19, 2002 (as per Annex 8 of the Complaint) and <sofitelstjames.com> since December 9, 2002.
The disputed domain name <sofitelstjame.com> was registered by Respondent on April 2, 2015, (as per Annex 1 of the Complaint), which revolves to a parking page indicating that the site has been temporarily disabled.
5. Parties’ Contentions
Complainant states that the disputed domain name <sofitelstjame.com> is similar to its trademark, since it owns and operates several hotels under the trademark SOFITEL, which is a well-known mark protected worldwide, according to Complainant.
SOFITEL, the luxury trademark of Complainant’s subsidiary, is the only French luxury hotel brand with a presence in five continents with 120 addresses. Among Complainant’s Sofitel Hotels, there is the “Sofitel St James Hotel”, which is a 5-star hotel in London, United Kingdom of Great Britain and Northern Ireland.
Complainant points that the disputed domain name reproduces the trademark SOFITEL in its integrity and mentions several previous panels which have decided similar cases, such as: Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650; 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. D2012-0553; Accor and SoLuxury HMC v. Paul Botterill, WIPO Case No. D2015-0513 (as per Annex 9 of the Complaint).
In this sense, Complainant adds that in many previous UDRP decisions, the panels have considered that the incorporation of a trademark in its integrity in a domain name may be sufficient to determine that the domain name is identical or confusingly similar to complainant’s registered trademark. Complainant refers to previous decisions, such as Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 (as per Annex 10 of the Complaint).
Moreover, Complainant alleges that the disputed domain name combines the misspelled geographical term “St Jame” with the reproduction of Complainant’s trademark SOFITEL. According to Complainant, this combination enhances the likelihood of confusion since Complainant and its subsidiaries operate a famous and award-winning hotel named “Sofitel St James” (as per Annexes 3 and 4 of the Complaint).
Additionally, Complainant alleges that the disputed domain name reproduces the name of the hotel “St James” and Complainant’s domain name <sofitelstjames.com> with the mere removal of the letter “s”, practice which is commonly referred to as “typosquatting”, since it creates virtually identical and/or confusingly similar marks to the Complainant’s trademark. Complainant mentions the following previous UDRP cases: Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais Danone of Paris v. Jose GregorioHernandez Quintero, WIPO Case No. D2009-1050 (as per Annex 11 of the Complaint).
Complainant further states that other UDRP panels have established that a domain name which consists of a trademark combined with a geographical term is still confusing and does not provide additional specification or sufficient distinctiveness from a previously registered trademark (as per Annex 12 of the Complaint).
Complainant also states that the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademarks and the disputed domain name, as per previous Accor v. Noldc Inc., WIPO Case No. D2005-0016(see Annex 13 of the Complainant). Complainant also adds that the mere adjuction of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant and insufficient to avoid a finding of confusingly similarity and mentions L’Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877 (as per Annex 14 of the Complaint).
With respect to Respondent having no rights or legitimate interests in the disputed domain name, Complainant asserts that Respondent is not affiliated with Complainant’s activities in any way, nor has Respondent been authorized by Complainant or its subsidiaries to use and register its trademark, or to seek registration of any domain name incorporating said mark.
Considering this, Complainant mentions previous UDRP decisions in which panels found that in the absence of any license or permission from Complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (as per Annex 15 of the Complaint)).
Complainant states that Respondent has no prior rights or legitimate interests in the disputed domain name since the SOFITEL trademarks were registered before the creation of the disputed domain name (as per Annexes 1 and 7 of the Complaint).
Also according to Complainant, the disputed domain name resolves to a webpage, which indicates that the website has been temporarily disabled. Complainant points out that such a website can be assimilated to an inactive page, what makes Complainant believe that Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name.
Complainant concludes that despite the website not appearing to have been used as a website (as per Annex 1 of the Complaint), the disputed domain name is being used as two email addresses “[…]@sofitelstjame.com” and “[…]@sofitelstjame.com” to perpetrate a scam (as per Annex 5 of the Complaint).
Complainant alleges that Respondent has tried to obtain money disguised as visa and document fees and states that this “advance-fee scam” cannot be evidence of any rights or legitimate interests in the disputed domain name. Complainant claims that Respondent used one of the “[…]@sofitelstjame.com” email addresses to pass as a subsidiary or operating division of Complainant’s group. Complainant mentions previous Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367(as per Annex 17 of the Complaint), which determined that such use of a domain name was held to be fraudulent and inapt to form a basis for a claim to a right or legitimate interest.
Complainant further claims that it sent Respondent cease and desist letters, but never received any answer (as per Annex 6 of the Complaint). According to Complainant this also proves that Respondent has no rights or legitimate interests in the disputed domain name. Complainant mentions a few UDRP cases, which can be found in Annex 19 of the Complaint.
Furthermore, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since it must have been aware of Complainant’s activities by the time of registration of the disputed domain name. Complainant alleges its trademark and hotel are well-known throughout the world and that the trademark registrations are covering, among other countries, the United States, which is the home country of the Respondent (as per Annexes 3, 4 and 7 of the Complaint).
Also in accordance with Complainant, the disputed domain name is being used as email addresses to perpetrate a scam email scheme for commercial gain, based on confusion with Complainant’s trademarks. Moreover, Complainant states that Respondent is emailing fake letters of appointments, which reproduce Complainant’s logo and mentions the official website of the hotel “Sofitel London St James”, as per Annex 5 of the Complaint.
Considering the above, Complainant concludes that it is evident that the disputed domain name was registered in bad faith, since Respondent most likely attempted to deceive Internet users, by inducing them to believe that they were connected with a legitimate job appointment abroad, which led them to providing personal financial information. According to a previous UDRP panel, this pattern of behavior constitutes bad-faith and is consistent with “phishing” and/or identity-theft purposes (as per Annex 17 of the Complaint).
As per use in bad faith, Complainant affirms that bad faith can also be found in the fact that the disputed domain name <sofitelstjame.com> is currently inactive, constituting the practice of passive holding, as Complainant shows in previous Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421 (as per Annex 26 of the Complaint) and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (as per Annex 27 of the Complaint).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for SOFITEL worldwide.
In addition, the Panel also considers that the disputed domain name <sofitelstjame.com> is confusingly similar to Complainant’s trademark SOFITEL and domain name <sofitelstjames.com>, since they are composed by the exact same terms “Sofitel” and “St James”, with the mere misspelling of the letter “s” in the disputed domain name <sofitelstjame.com>.
It is clear that the mere misspelling of the letter “s” in the disputed domain name is not sufficient to distinguish the trademark and domain names owned by Complainant from the disputed domain name.
The Panel understands that the disputed domain name containing Complainant’s trademark in its entirety is sufficient to cause confusion and create false associations between Complainant and Respondent, misguiding consumers into believing that Respondent’s activities have the same origin as to the products and services provided under the SOFITEL trademark.
Therefore, the Panel finds that the disputed domain name <sofitelstjame.com> is confusingly similar to Complainant’s registered trademark.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <sofitelstjame.com>.
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license with Respondent, regarding the use of Complainant’s trademarks, nor is Respondent affiliated with Complainant’s activities whatsoever.
The Panel also understands that Complainant owns the trademark SOFITEL since October 15, 1974, and the domain name <sofitel.com> since April 11, 1997, whereas Respondent only registered the disputed domain name in April 2, 2015, and this shows that Complainant owns prior rights to the trademark and domain name bearing SOFITEL.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s trademarks at the time of registration of the disputed domain name. In this sense, the Panel concludes that Respondent registered the disputed domain name with the intention of taking advantage of Complainant’s trademarks.
The Panel also notes that the disputed domain name is not being currently used with an online website, which constitutes “passive holding”, and may, in certain circumstances, constitute evidence of bad faith use. In this sense, the Panel refers to paragraph 3.2 of the WIPO Overview 2.0:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”
Furthermore, it is clear to the Panel that the disputed domain name is confusingly similar to Complainant’s SOFITEL trademarks and its hotel “Sofitel St James” and that the mere misspelling of the letter “s” in <sofitelstjame.com> indicates the practice of “typosquatting”. By doing so, Respondent was evidently seeking to attract Internet users who mistype or misspell Complainant’s domain name <sofitelstjames.com>, to its website, which constitutes a further indication of bad faith. A similar understanding was employed in previous UDRP decisions, as per Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302.
In addition, it is clear that Respondent’s use of the disputed domain name in association with an email scheme has the purpose of making the receivers think that the emails come from Complainant or at least from someone related to Complainant, which is a clear indication of bad faith.
The Panel agrees that Respondent’s intention to deceive Internet users through these email communications may constitute “phishing”, as claimed by Complainant. “Phishing” is a form of Internet fraud – often related (but not limited) to banking activities - that aims to obtain valuable information of clients, such as credit cards, social security numbers, user IDs, passwords, etc. A fake email address is typically created that is similar to that of a legitimate organization, in this case Complainant’s company and hotel chain, and this information is used for identity theft and other fraudulent activities. In this sense, see Halifax Plc. v. Sontaja Sanduci, WIPO Case No. D2004-0237 and also CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251.
Thereby, the Panel believes that the disputed domain name creates a serious risk of “phishing” activities and this is another indication of bad faith, since such practice could seriously harm Complainant’s clients and also damage Complainant’s reputation.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in 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 <sofitelstjame.com> be transferred to Complainant SoLuxury HMC.
Gabriel F. Leonardos
Date: July 2, 2015