WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Lisa Katz, Domain Protection LLC / Whois Privacy Services Pty Ltd / Domain Hostmaster
Case No. D2015-1284
1. The Parties
Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & associés, France.
Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America / Whois Privacy Services Pty Ltd / Domain Hostmaster, of Fortitude Valley, Australia.
2. The Domain Name and Registrar
The disputed domain name <softitel.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on July 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on July 29, 2015.
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 Respondent of the Complaint, and the proceedings commenced on July 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2015.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 25, 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
Complainants, Accor (First Complainant) and SoLuxury HMC (Second Complainant), are members of the same group of companies and are active in the hotel business. Second Complainant, a subsidiary of First Complainant, is the holder of a number of trademarks consisting of SOFITEL, registered in various countries, inter alia:
- SOFITEL (word mark), registered as an International Trademark which designates various countries, including the United States in classes 35, 39, and 43 under number 863332 on August 26, 2005 and duly renewed;
- SOFITEL (+ design), registered as an International Trademark which designates various countries including the United States, in classes 35, 36, 43 and 44 under number 939096 on August 30, 2007;
- SOFITEL (word mark), registered as an Australian trademark in class 42 under number 337140 on August 29, 1979 and duly renewed.
According to the information provided by the Registrar, the registrant of the disputed domain name <softitel.com> is Lisa Katz / Domain Protection LLC. The disputed domain name was registered on October 18, 2005 using a privacy service.
Respondent has been using the disputed domain name to refer to a parking page containing sponsored links, a Facebook page, and the official website of the first Complainant. On March 6, 2015, Complainants sent a cease-and-desist letter to Respondent via registered letter and email. Respondent did not reply to the cease-and-desist letter or the Complaint.
5. Parties’ Contentions
Complainants consider the disputed domain name to be confusingly similar to trademarks and service marks in which they claim to have rights. Complainants further claim that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainants, Respondent has not used the disputed domain name in connection with any legitimate use. Also, according to Complainants, Respondent has not been commonly known by the disputed domain name.
Finally, Complainants consider that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on Complainants to make out their case and it is apparent, both from the terms of the Policy and previous UDRP decisions, that Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have 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 Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainants must first establish that there is a trademark or service mark in which they have rights. Complainants have clearly established that there is a SOFITEL trademark in which the Second Complainant has rights. The trademark has been registered and used in various countries, including in the United States and Australia.
The disputed domain name <softitel.com> reproduces the Second Complainant’s trademark SOFITEL in its entirety with the mere addition of the letter “t”. The addition of a mere letter does not significantly affect the appearance or pronunciation of the disputed domain name. This practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainants’ trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar; WIPO Case No. D2011-0692, Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
Accordingly, Complainants have made out the first of the three elements that they must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants have the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for Complainants to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on Respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainants. There are no indications that a connection between Complainants and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c)(iii). First, Respondent has been making “commercial gain” by virtue of the pay-per click (“PPC”) links on the page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the website linked to the disputed domain name because they believe it to be associated with Complainants. Further, Respondent’s use of the disputed domain name to resolve to a PPC parking page containing sponsored links, cannot be considered “fair” on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the name was being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant […]. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill.”). However, it is not legitimate to register a domain name and use it for a PPC parking page where the domain name includes a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
In the instant case, there appears to be no dictionary meaning for the term “softitel”. To the contrary, the disputed domain name is confusingly similar to a known trademark. The value of the disputed domain name to Respondent is, therefore, its value as a trademark referring to Complainants. By generating automated links at the website under the disputed domain name, the Panel concludes that Respondent is taking advantage of Complainant’s trademark, since Internet users looking for Complainants may land on a PPC parking page which has no link whatsoever with Complainants or their trademarks.
Finally, Respondent did not reply to Complainants’ arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainants have established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainants must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of the domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the respondent’s website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).
In the present case, Respondent is using the disputed domain name to publish a website advertising third party websites, some of which offer for sale services of Complainants’ competitors. In addition, Respondent has failed to respond to the Complaint. Furthermore, given the notoriety of Complainants’ trademark, it is inconceivable to this Panel that Respondent was unaware of Complainants and their trademark rights when it registered the disputed domain name.
Finally, the Panel holds that the addition of the letter “t” in the term “sofitel” is a form of typosquatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iii) and (iv) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown 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 <softitel.com> be transferred to the Second Complainant, SoLuxury HMC.
Flip Jan Claude Petillion
Date: September 8, 2015