WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR, SoLuxury HMC v. WhoisGuard Protected, WhoisGuard, Inc., Van Dung
Case No. D2018-1237
1. The Parties
Complainants are ACCOR and SoLuxury HMC of Issy-Les-Moulineaux, France (hereinafter “Complainant”), represented by Dreyfus & associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Van Dung of Rach Gia, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <sofitelmplsdining.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 4, 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
Complainant is recognized as a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. Complainant operates over 3,972 hotels in ninety-two countries around the world, which contain over 500,000 rooms, from economy to upscale. For more than 45 years, Complainant has offered hotel stays tailored to the specific needs of business and leisure customers, and consequently has become recognized and appreciated around the world for their service quality. In particular, SOFITEL is the only French luxury hotel brand with a presence on five continents, including in particular 37 hotels in Viet Nam where Respondent is located. Complainant owns valid and subsisting registrations for the SOFITEL trademark in numerous jurisdictions around the world, including international registrations with designations in Viet Nam where Respondent is located, such as International Trademark No. 86332 for SOFITEL, registered on August 26, 2005.
Respondent registered the disputed domain name on July 19, 2017. Currently, the disputed domain name resolves to an inactive Windows Server Internet Information Services website. In addition, mail servers are configured through the disputed domain name.
5. Parties’ Contentions
Complainant asserts that the disputed domain name reproduces entirely their SOFITEL trademark, which previous UDRP panels have considered to be “well-known” or “famous,” such that incorporation into a domain name is sufficient to conclude that domain name is identical or confusingly similar to the SOFITEL trademark. Complainant also asserts that the addition of the geographical term “MPLS” (an abbreviation for Minneapolis, Minnesota), and the generic term “dining,” are insufficient to avoid any likelihood of confusion. Rather, Complainant asserts, these terms increase the risk of confusion, because they describe the location of a Sofitel hotel, and the restaurant services of that hotel. Complainant also asserts that the “.com” generic Top-Level Domain (“gTLD”) is not taken into consideration in confusing similarity examinations.
Complainant asserts that Respondent has no prior rights or legitimate interest in the disputed domain name, due to several years of priority for the SOFITEL before the disputed domain name was registered. Complainant also asserts that Respondent cannot feign any legitimate intent or activity in connection with the disputed domain name due to its similarity to the famous SOFITEL mark. In addition, Complainant asserts that Respondent has made no demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, which is highlighted by its use of privacy registration services to frustrate Complainants attempts to contact Respondent. Complainant further asserts that Respondent is not commonly known by the name Sofitel, and Respondent is not affiliated or otherwise authorized by Complainant to use the SOFITEL mark.
Complainant argues it is impossible that Respondent did not have Complainant and the SOFITEL mark in mind when it registered the disputed domain name, due primarily to the well-known nature of the mark throughout the world. To that end, Complainant asserts that Respondent’s failure to perform a quick trademark search or simple Google Internet search is a contributory factor establishing bad faith. Complainant also asserts that Respondent’s deliberate concealment of its identity and contact information indicated registration in bad faith. Complainant also argues that long term passive holding of the disputed domain name constitutes use in bad faith, based on the strong reputation of the SOFITEL mark. Complainant also asserts that the disputed domain name is configured with an email server, which may be used to perpetrate phishing attacks against Complainant’s customers or employees associated with its Minneapolis, Minnesota hotel. Finally, Complainant explains that it sent a cease and desist letter to Respondent on September 21, 2017, and that Respondent never replied to this cease and desist letter. Complainant points to Respondent’s failure to reply and failure to respond to the instant complaint as additional evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Multiple Complainants Filing Against A Single Respondent
Complainant is composed of members of the same group of French companies, namely Accor and SoLuxury HMC, which are parent and wholly owned subsidiary respectively. Thus, this Panel finds that they constitute a single entity for purposes of the UDRP, pursuant to paragraph 10(e) of the UDRP Rules. See WIPO Overview 3.0, section 4.11.1. See also Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760 (“The Panel finds that the naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary.”).
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SOFITEL mark, which has been registered internationally, including in Viet Nam where Respondent is located.
With Complainant’s rights in the SOFITEL mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s SOFITEL mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the descriptive and geographical terms “MPLS” and “dining” after the dominant SOFITEL element does not distinguish the disputed domain name from Complainant’s mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SOFITEL mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the Policy.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its SOFITEL mark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to redirect Internet users to an inactive Windows Server Internet Information Website. Furthermore, it is evident that Respondent is not known by the disputed domain name.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 trademark 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 trademark 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 website 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 website or location or of a product or service on your website or location.”
In the instant proceeding, the record is devoid any demonstrable use of the disputed domain name since it was registered on July 19, 2017. However, Complainant has submitted ample evidence demonstrating the distinctiveness and worldwide reputation of the SOFITEL mark, including recognition of the same by numerous prior UDRP panels. See, e.g., Accor and SoLuxury HMC v. Paul Botterill, WIPO Case No. D2015-0513; Accor, SoLuxury HMC v. Whoisguard Protected, Whoisguard, Inc. / Golding Ernst, WIPO Case No. D2015-0492; Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650. Thus, when coupled with the failure of the Respondent to respond to the Compliant or provide any evidence of actual or contemplated good-faith use of the disputed domain name, and the relative implausibility of any good faith uses for the disputed domain name, this Panel views such long-term passive holding as strong evidence of registration and use in bad faith. WIPO Overview 3.0, section 3.3. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In addition, there is evidence in the Complaint that an email server has been configured on the disputed domain name, and Complainant asserts that this creates a risk that Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with Complainant in connection with its hotel in Minneapolis, Minnesota. In the absence of any response from Respondent, and in conjunction with the additional indicia of bad faith present in this dispute, the Panel is inclined to agree, as prior panels have done as well. See, e.g., Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225.
Finally, Respondent failed to reply to cease and desist correspondence sent by Complainant’s counsel or to respond to the Complaint in this proceeding. The failure of Respondent to reply or respond to the same in this proceeding supports an inference of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name, <sofitelmplsdining.com>, be transferred to Complainant, SoLuxury HMC.
Brian J. Winterfeldt
Date: July 18, 2018