WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor, SoLuxury HMC v. Mo Yong Bao, Yulinshizhongdingsuofeitejiudiantouziyouxiangongsi
Case No. D2018-1056
1. The Parties
The Complainants are Accor and SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Mo Yong Bao, Yulinshizhongdingsuofeitejiudiantouziyouxiangongsi of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <zdsofitel.com> is registered with HiChina Zhicheng Technology Ltd.
The disputed domain name <zdsofitel.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (collectively, the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 15, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On May 18, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 22, 2018, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on June 18, 2018. 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 has been in the hospitality service for more than 45 years. It operates various levels of hotels, ranging from the economical to the luxurious.
In 1964, the Sofitel brand of hotels and resorts was created. Currently, the Sofitel brand has been extended to include the Sofitel Legend, So Sofitel, and MGallery by Sofitel. There are about 131 hotels under the Sofitel brand around the world.
The second Complainant (a wholly-owned subsidiary of the first Complainant) is the registered proprietor of trade mark registrations for SOFITEL including: International Registration No. 863332, registered on August 26, 2005 (including a designation of China), International Registration No. 642172, registered on August 31, 1995 (including a designation of China), and European Union Trade Mark Registration No. 4303277, registered on February 3, 2006.
The second Complainant is the registered owner of the domain name <sofitel.com>, registered on April 11, 1997.
The Complainants operate more than 4,100 hotels in 95 countries, under more than 20 different brands including Novotel, Grand Mercure, Pullman and Ibis.
The disputed domain names were registered on December 7, 2017 and resolve to inactive webpages.
5. Parties’ Contentions
There are multiple complainants as both companies belong to the same group and there is a common grievance against the Respondent.
The Complainants enjoy worldwide reputation in the trade mark SOFITEL. The disputed domain names reproduce entirely the Complainants’ SOFITEL trade mark, which has been held to be well-known or famous by UDRP panels in earlier decisions (e.g., Accor and SoLuxury HMC v. He Yong Jian, WIPO Case No. D2016-1919; Accor and SoLuxury HMC v. Paul Botterill, WIPO Case No. D2015-0513). The letters “zd” do not dispel any likelihood of confusion. Additionally, the generic Top-Level Domain (“gTLD”) “.com” and “.xyz” are not to be taken into consideration when examining the identity or similarity between a complainant’s trade mark and a domain name in dispute. Hence, the disputed domain names are identical or confusingly similar to the trade mark SOFITEL in which the Complainants have rights.
The Respondent has no rights or legitimate interests in the disputed domain names. The SOFITEL mark was registered many years before the registration date of the disputed domain names. The Respondent is not commonly known by the name “Sofitel”, is not affiliated with the Complainants, has not been authorized or licensed to use the SOFITEL mark nor to register any domain name incorporating the SOFITEL trade mark. The SOFITEL mark is so well-known that no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed. The Respondent has not made any reasonable or demonstrable preparations to use the disputed domain names.
The disputed domain names were registered and are being used in bad faith. It is not plausible that the Respondent was unaware of the Complainants when it registered the disputed domain names. The Complainants and their SOFITEL mark are well-known throughout the world. An Internet search would have surfaced the SOFITEL trade mark, even if the Respondent were unaware of the Sofitel brand of hotels. The inactivity of use of the disputed domain names does not mean that they are used in good faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Preliminary Procedural Issue: Multiple complainants
The Panel agrees that there is a common grievance caused by the Respondent’s conduct and that it would be appropriate and procedurally efficient for the proceeding to include both Complainants. See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.2 Preliminary Procedural Issue: Multiple domain names
Paragraph 10(e) of the Rules permits the consolidation of multiple domain name disputes. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder.
The Complainants requested consolidation of the multiple domain name disputes to avoid unnecessary duplication or inconsistent results arising from multiple proceedings. Furthermore, the disputed domain names are registered in the names of identical registrants; the organization names of the registrants are identical; the email addresses of the registrants are identical; the composition of the disputed domain names is identical; the postal addresses of the registrants are identical, and the disputed domain names were registered on the same day.
The Panel notes that the registrant for both disputed domain names is identical, namely Mo Yong Bao. The Panel finds that the circumstances of this case indicate that the disputed domain names are subject to common control and therefore it would be procedurally fair and efficient for the disputes involving the disputed domain names to be consolidated.
6.3 Language of the Proceeding
The registration agreement was in Chinese but the Complainant requested that English apply. The reasons given are that the Complainants are French and do not have knowledge of the Chinese language. To have the Complaint translated into Chinese would involve additional expense and cause a delay. English is the primary language used in international relations and is one of the working languages of the Center. The disputed domain names comprise only Latin characters.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless 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.”
Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition.”
The registration of the disputed domain names in Latin script, the same as that used for the Complainant’s mark reflects a familiarity on the Respondent’s part with non-Chinese, western languages, as well as a familiarity with the Complainant’s Sofitel hotel brand name. The Respondent’s aim in registering the disputed domain names is likely to have been to target Internet users from the western/English-speaking world.
The Respondent has not responded in this proceeding nor intimated that because it is not familiar with English, Chinese has to be adopted as the language of the proceeding. The Center has sent to the Respondent all communications concerning the administrative proceeding in Chinese and not only in English. The Respondent could have, if it so wished, objected or responded in Chinese.
There is nothing before the Panel which gives rise to a concern that the Respondent’s interests would be prejudiced if English were to be the language of the proceeding. To require the Complainants to have the Complaint and annexes translated into Chinese would, however, lead to a delay in the proceeding, which does not seem merited in this case.
The Panel therefore concludes that it would be appropriate for English to be adopted as the language of the proceeding.
6.4 Substantive Issues
A. Identical or Confusingly Similar
The disputed domain names are essentially dominated by the incorporation of the Complainants’ SOFITEL trade mark. The disputed domain names are “distinguished” only by the addition of the letters “zd” and the gTLDs “.com” and “.xyz”. The SOFITEL trade mark is immediately identifiable in the disputed domain names. The disputed domain names are confusingly similar to the Complainants’ registered SOFITEL trade mark. The addition of the letters “zd”, and the gTLDs do nothing to remove the confusing similarity. This position is consistent with the well-established position set by numerous earlier UDRP panel decisions.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent did not respond to the Complaint nor present any evidence to demonstrate it has rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The Complainants, on the other hand, has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names, noting that the Respondent has never been granted any permission to use the Complainants’ marks, nor is it otherwise affiliated with the Complainants, and also noting that the disputed domain names are not actively used.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent did not give any explanation for how it came to devise the term “zdsofitel”. Considering the length of time and extent to which the Complainants have been in business and to which the mark SOFITEL has used and been registered, it is highly improbable that the Respondent was not aware of the Complainants’ business and rights in the trade mark SOFITEL at the time of registering the disputed domain names, and did so targeting the Complainants’ mark.
The fact that the disputed domain names are passively held does not prevent a finding of bad faith registration and use (see the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the circumstances, and noting a complete lack of any evidence of any good faith intentions or use on the part of the Respondent, the Panel finds that the third element of paragraph 4(a) of the Policy has been 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 names, <zdsofitel.com> and <zdsofitel.xyz> be transferred to the second Complainant, SoLuxury HMC, as requested by the Complainants.
Date: June 25, 2018