WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Sofitel London St James
Case No. D2016-1156
1. The Parties
The Complainants are Accor of Issy-les-Moulineaux, France (the “First Complainant”) and SoLuxury HMC of Issy-les-Moulineaux, France (the “Second Complainant”), represented by Dreyfus & associés, France.
The Respondent is Sofitel London St James of Albuquerque, New Mexico, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <sofistelstjames.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2016, 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 of the Respondent.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 14, 2016. 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 First Complainant operates more than 3,900 hotels in 92 countries worldwide. Its group includes hotel chains such as “Pullman”, “Novotel”, “Mercure”, “Sofitel” and “Ibis”. “Sofitel” is a French hotel brand with a presence on five continents, in around 40 countries. “Sofitel” is present in the United States with six hotels.
The Second Complainant owns inter alia the United States Patent and Trademark Office (“USPTO” trademark SOFITEL, registered on October 15, 1974.
The Domain Name was registered April 28, 2016. The Domain Name does not resolve to an active website but has been used in fraudulent emails.
5. Parties’ Contentions
The Complainants own and operate several hotels under the trademark SOFITEL, protected worldwide particularly in relation to hotels and restaurants services. The Complainants document several international trademark registrations, designating the United States. The Complainants argue that the Complainants’ trademark SOFITEL is well-known in the field of hotels, inter alia, documented by reference to former WIPO UDRP decisions, such as Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650.
Pursuant to the Complaint, the Domain Name <sofistelstjames.com> combines the geographical term “st. james” with the imitation of Complainants’ trademark. This combination enhances the likelihood of confusion since Complainants operate a hotel named “Sofitel St James”.
The disputed domain name reproduces the name of Complainants’ hotel “Sofitel St James”, with the mere addition of the letter “s” between the letters “i” and “t” of the trademark SOFITEL.
According to the Complainants, the Respondent is not affiliated with Complainants in any way nor has it been authorized by the Complainants to use and register the trademark, nor to seek registration of any domain name incorporating the trademark. The absence of any license or permission from the Complainants to use the well-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. The registration of the SOFITEL trademark preceded the registration of the Domain Name. Besides, when registering the Domain Name, the Respondent provided the name “Sofitel London St James” without any authorization from the Complainants. In the view of the Complainants, this is a case of identity theft, as the Respondent pretends to be related to the Complainants’ hotel. The Complainants believe the Respondent is a cybersquatter who registers domain names containing famous trademarks, without authorization from their owner. It also appears that the Domain Name has been used as a fake website, imitating an official recruitment website for the hotel “Sofitel London St James”. The Complainants also document that an email address linked to the Domain Name has been used to send out fraudulent job offers for scamming/phishing purposes.
The Complainants find it implausible that Respondent was unaware of Complainants when it registered the Domain Name. The Complainants are well-known worldwide. The Complaints point to the fact that the information provided by the Respondent when registering the Domain Name appears to be fake, as its alleged postal address is not linked to Complainants nor to the hotel “Sofitel St James Hotel”. Moreover, the Complainants note that Respondent’s email address “[…]@disneycruisedisneygo.com” is related to the domain name <disneycruisedisneygo.com>. According to the Whois database, the registrant of this domain name is the company “Disney Cruise Line”. However, the postal address provided by the registrant does not seem to be linked to “Disney Cruise Line” or Disney Enterprises, Inc. The Complainants infer that the registrant of this domain name is the same person as Respondent, who is following a fraudulent pattern by registering domain names reproducing or imitating famous trademarks without authorization. Moreover, the Complaint documents that an email address linked to the Domain Name has been used for a scam email scheme for commercial gain based on confusion with the Complainants’ marks.
The Respondent has not stated any valid arguments to justify the registration of the Domain Name in response to Complainants’ cease-and-desist letter, nor has it responded to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have established that they have rights in the trademark SOFITEL.
The test for confusingly similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name <sofistelstjames.com> combines the geographical term “st james” with the Complainants’ trademark, with the mere addition of the letter “s” between the letters “i” and “t” of the trademark SOFITEL. The addition of the geographical term (where the Complainants have a hotel) enhances the likelihood of confusion. The extra letter “s” does not alter this.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent does not have registered trademarks or trade names corresponding to the Domain Name. Neither is there any evidence suggesting that the Respondent has been using “Sofitel” in a way that would give it legitimate rights in the Domain Name. The Complainants have granted no authorization to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, based on the evidence, it seems that the Respondent has chosen the Domain Name based on the Complainant’s trademark value. The Respondent has operated a fake website, imitating a recruitment website for the hotel “Sofitel London St James”. The Complaint documents that an email address linked to the Domain Name has been used for a scam. The Respondent has not answered the Complainant’s contentions.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent was aware of the Complainants’ trademark SOFITEL and the hotel business when it registered the Domain Name. The Complainants have used their trademark long before the registration of the Domain Name. The trademark is widely known.
The Panel also finds use of the Domain Name in bad faith. The Domain Name has been used, as evidenced by the Complainants, to attract Internet users for commercial gain by misleading them into believing that the website at the Domain Name is authorised by or somehow connected to the Complainants, see above. The Complainants have proved beyond any doubt that this a case of cybersquatting and fraudulent use of a domain name confusingly similar to the Complainants’ trademark.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sofistelstjames.com> be transferred to the Complainants.
Date: July 19, 2016