WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. He Yong Jian
Case No. D2016-1919
1. The Parties
The Complainants are Accor and SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is He Yong Jian of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sofitel.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 20, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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.
On September 23, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding. On September 25, 2016, the Respondent submitted a request that Chinese be the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceeding commenced on September 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2016. The Response was filed with the Center on October 20, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on October 26, 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 Complainants are Accor and SoLuxury HMC.
Accor, founded in 1967, is a well-known multinational hotel group with its headquarters in Paris, France.
SoLuxury HMC is a subsidiary of Accor with its registered address at 82 rue Henri Farman, CS 20077, 92445 Issy-Les-Moulineaux, France.
Both Complainants own, operate and franchise more than 3500 hotels across the world including France and China. Sofitel is one of the French hotel chains under the Complainants; it first opened in 1964 in Strasbourg, France and has now expanded to over 100 hotels in 40 countries.
The Complainants own various SOFITEL trademarks around the world, including International trademark registration no. 863332 (registered on August 26, 2005), no. 642172 (registered on August 31, 1995), no. 614992 (registered on October 29, 1993) and no. 939096 (registered on August 30, 2007).
The Complainants own 17 SOFITEL trademarks in China, including trademark registration nos. 283924 and 13722786, and Hong Kong trademark registration nos. 199508244, 300794449, 301090665, 301090674 and 303505275.
The Complainants are owners of the domain names <sofitel.com> and <sofitel.cn>.
The Respondent is an individual resident in Beijing, China.
The disputed domain name <sofitel.vip> was registered on May 17, 2016 and it does not resolve to any page.
On June 14, 2016, a cease-and-desist letter was sent to the Respondent through registered post and email regarding the Complainants' trademark rights.
On June 24, 2016 and June 30, 2016, the Complainants' representatives sent out two further cease-and-desist letters to remind the Respondent about their rights.
On June 30, 2016, the Respondent replied in English and offered to sell the disputed domain name but with no price suggestion.
On July 13, 2016, the Respondent asked in English the Complainants to purchase the disputed domain name from the Registrar.
On August 5, 2016, the Complainants offered to reimburse the Respondent with USD 50 for registration cost of the disputed domain name but the Respondent did not reply to the Complainant's offer.
5. Parties' Contentions
The Complainants' contentions are set out below.
The Complainants submit that the disputed domain name <sofitel.vip> is identical or confusingly similar to the SOFITEL trademark. The disputed domain name contains SOFITEL in its entirety as the distinctive part of the domain name. The new generic Top-Level Domain ("gTLD") does not affect the confusing similarity.
The Respondent has no connection with the Complainants or any of its affiliates and has never sought or obtained any trademark registrations for SOFITEL. It, therefore, has no rights or legitimate interests in the disputed domain name.
The Complainants submit that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainants' rights in the SOFITEL trademark given its worldwide reputation and the Respondent acquired the disputed domain name only to disrupt the business of the Complainants and/or to prevent the Complainants from reflecting its mark in a corresponding domain name.
The Respondent responded on the October 20, 2016 and his contentions are as follow:
The Respondent has no knowledge of the Complainants' trademark and he contends that there are no trademark registrations in the category of computer and electronic products prior to his registration of the disputed domain name.
The Respondent contends that the English characters in the disputed domain name <sofitel.vip> were chosen by random and it was registered lawfully.
The Respondent further contends that he has no intention to disrupt the business of the Complainants and to prevent the Complainants from reflecting its mark in a corresponding domain name and/or disrupting the Complainants' business.
The Respondent further contends that the Respondent has no intention of bad faith and rejected the circumstances listed in the 4(a)(iii) of the Policy.
6. Discussion and Findings
6.1. Language of Proceeding
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding to be English on the grounds: (a) English is the primary language for international relations; (b) that the Complainants, based in France, are unable to communicate in Chinese; and (c) that the Complainants contend that the Respondent speaks perfect English.
On September 25, 2016, The Respondent requested the language of proceeding to be in Chinese because the Registration Agreement is in Chinese but no further explanation was given.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent has displayed his English language ability in his email correspondence with the Complainants. The Panel has reasons to believe that the Respondent has no problem understanding the English language. The Respondent has responded showing that he understood the Complaint and has filed a response.
These factors lead the Panel to determine to follow the Center's preliminary determination and accept the Complaint in English and the Response in Chinese. The Panel will render its decision in English.
6.2. Substantive Issue
To succeed, the 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 the Complainant has rights;
(ii) the 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 use in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <sofitel.vip>, other than the gTLD ".vip", is identical to the Complainants' trademark. The disputed domain name incorporates the Complainants' SOFITEL trademark in full. The disputed domain name is therefore identical to the Complainants' registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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."
The Complainants' brands are internationally well known. The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainants.
The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish they have rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The Respondent filed a response and attempted to justify that he has rights but did not present any concrete evidence to support his claim. He did not elaborate on the purpose of registering the disputed domain name but simply stated he had no knowledge of the Complainants' SOFITEL trademark and the English characters were chosen by random. The Panel further finds it difficult to believe that the English characters were chosen by random especially given the Complainant's business presence in China. No business registration or any proof of business activity was provided to show the Respondent's legitimate rights and interests.
The disputed domain name does not resolve to any page, the non-use further shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent also has not demonstrated that the disputed domain name is in connection with any bona fide offering of goods or services.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <sofitel.vip> was registered in bad faith and is being used in bad faith. The Respondent must have known of the Complainants when it registered the disputed domain name given the Complainants' worldwide reputation and their hotel presence in China. There are more than 20 Sofitel hotels across China. As stated above, the Panel finds it difficult to believe that the word "sofitel" was chose by random.
The Panel furthers notes that the new gTLD ".vip" was chosen, which is generally the acronym for "very important person". Given the reputation for luxury the Complainants' SOFITEL brand, the Panel considers that the Respondent was seeking to take advantage of the Complainants' brand combined with the new gTLD ".vip" to create a false impression that the disputed domain name is in some ways associated to the Complainants in an attempt to attract potential customers in bad faith. See Orlane S.A. v. Yu Zhou He / He Yu Zhou, WIPO Case No. D2016-1763; OSRAM GmbH v. shidankj, WIPO Case No. D2016-1250.
While the disputed domain name has not yet been used, this does not prevent a finding of bad faith.
See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003, where the panel, after considering all evidence, decided that passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii).
"Reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. The Respondent's immediate offer to sell the domain name despite having being summoned to transfer the domain name to Complainant free of charge through a cease-and-desist letter, without giving any reasons why he had registered the domain name or without contesting Complainant's trademark, are clear indications that he was aware of Complainant's trademark when he registered the disputed domain name". See Accor, So Luxury HMC v. Youness Itsmail , WIPO Case No. D2015-0287.
Similarly, when the Complainants wrote in the cease-and-desist letters for a request of transfer of the disputed domain name from the Respondent free of charge, the Respondent replied and asked for money in exchange. This serves as evidence that the Respondent has acquired the disputed domain name for the purpose of selling the disputed domain name to the Complainants who are the owners of the trademark, thus disrupting the Complainants' business and/or preventing the Complainants from reflecting its mark in a corresponding domain name.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <sofitel.vip> be transferred to the Complainants.
Date: November 9, 2016