WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Ayman Morsy, Vcreation
Case No. D2018-1576
1. The Parties
Complainants are Accor and SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
Respondent is Ayman Morsy, Vcreation of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <pgsofitel.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 17, 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
Complainants in this administrative proceeding are the French companies, Accor and SoLuxury HMC (Accor’s subsidiary). Complainant Accor is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. For more than 45 years, Complainant Accor has provided customers with expertise acquired in this core business. Complainant Accor operates more than 4,100 hotels in 100 countries worldwide with over 600,000 rooms, from economy to upscale. Complainants’ group includes hotel chains such as Raffles, Sofitel, Onefinestay, Fairmont, MGallery, Pullman, Swissotel, Grand Mercure, Novotel, Mama Shelter, Mercure and Ibis. Complainant Accor is also present in Egypt with 23 hotels including four Sofitel hotels.
In 1964, SOFITEL Hotels & Resorts was created as the first French international hospitality brand. Today the SOFITEL brand also encompasses the Sofitel Legend, the SO SOFITEL and the MGallery by SOFITEL.
Complainants own numerous trademark registrations around the world, including the following trademark registrations:
- International trademark SOFITEL No. 863332, designating Egypt (among others), registered on August 26, 2005, duly renewed, covering services in classes 35, 39 and 43;
- International trademark No. 642172, registered on August 31, 1995, duly renewed, covering services in classes 35, 36, 37 and 42;
- European Union Trade Mark SOFITEL No. 004303277, filed on March 22, 2005 and registered on February 3, 2006, duly renewed, covering services in classes 35, 39 and 43.
Complainants operate the following domain name reflecting its trademark in order to promote its services, <sofitel.com>, which was registered on April 11, 1997.
Complainants made investigations concerning the Domain Name and found that an email server had been configured for it, thus raising concerns by Complainants of the risk of phishing. On July 4, 2017, Complainants sent a cease-and-desist letter to Respondent via postal letter and email on the basis of Complainants’ trademark rights. However, no reply was received from Respondent despite several reminders. The postal version of the cease-and-desist letter was returned to Complainants marked as undelivered.
On July 4, 2017, Complainants also sent a notification to the email service provider to request the deactivation of the email server set up for the Domain Name and any other email service linked to the Domain Name, followed by several reminders. On July 11, 2017, the email service provider replied to Complainants and asked for complete details on Complainant’s brand. Complainant sent an email on July 13, 2017 to the email service provider with the requested details and reiterated its request for the deactivation of the email server set up for the Domain Name and any other email service linked to that Domain Name. Several emails were exchanged between Complainants and the email service provider, but none of them were conclusive. The last email of the email service provider stated that an email would be sent to the registrant and it would await registrant’s reply to proceed with the issue.
The Domain Name was registered on April 13, 2017. The Domain Name resolves to a website under construction.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainants state that the Domain Name entirely reproduces Complainants’ trademark, SOFITEL, while adding the letters “pg”. Previous UDRP panels have considered that the SOFITEL mark is well-known or famous. See 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; 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; Accor, SoLuxury HMC v. Ha Viet Cuong, WIPO Case No. D2014-1366; Accor, SoLuxury HMC v. Huxianfeng, WIPO Case No. D2014-1326; Accor, SoLuxury HMC v. Yin Wei Fen, WIPO Case No. D2012-0553; Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262; and Accor, SoLuxury HMC v. Zeng Zheng, WIPO Case No. D2013-1541.
Complainant further states that many UDRP panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark. A minor variation to a trademark, such as adding a short letter or number group, or even generic or highly descriptive words, or geographic identifiers, is usually insufficient to confer sufficient distinctiveness to a domain name to avoid user confusion.
Accordingly, Complainants contend that by registering the Domain Name, Respondent created a likelihood of confusion with Complainants’ SOFITEL mark. The Domain Name could mislead Internet users into thinking that it is, in some way, associated with Complainants. For all of the above-mentioned reasons, Complainants states that the Domain Name is identical or confusingly similar to the trademark SOFITEL in which Complainants have rights, and therefore paragraph 4(a)(i) of the Policy is fulfilled.
(ii) Rights or legitimate interests
Complainants state that Respondent has no prior rights or legitimate interests in the Domain Name. The registration of the trademark SOFITEL preceded the registration of the Domain Name by many years. Moreover, the Domain Name is so similar to Complainants’ famous trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name. Respondent is not commonly known by the name SOFITEL and is not in any way affiliated with Complainants, nor authorized or licensed to use the trademark SOFITEL, or to seek registration of any domain name incorporating the mark.
Complainants state that previous UDRP panels have found that, in the absence of any license or permission from a complainant to use a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. Besides, the Domain Name resolves to a website under construction, which is considered an inactive page. Respondent has not made any reasonable and demonstrable preparations to use the Domain Name with a bona fide offering of goods or services. Respondent fails to show any intention of noncommercial or fair use of the Domain Name.
Additionally, Complainants state that Respondent never answered Complainants’ cease-and-desist letter despite several reminders. UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainants, it can be assumed that the respondents have no rights or legitimate interest in the disputed domain names. Furthermore, an email server was configured using the Domain Name and thus, there might be a risk that Respondent is engaged in a phishing scheme. In sum, the Domain Name is not used in any type of legitimate business or services.
For all of the above-cited reasons, Complainants assert that Respondent has no rights or legitimate interests in respect to the Domain Name under paragraph 4(a)(ii) of the Policy.
(iii) Registered and used in bad faith
Complainants contend that it is implausible that Respondent was unaware of Complainants when he registered the Domain Name. Bad faith can be found where a respondent knew or should have known of complainants’ trademark rights and, nevertheless, registered a domain name in which the respondent had no right or legitimate interest. In particular, Complainants are well-known throughout the world and their trademark SOFITEL is registered worldwide. Several UDRP panels have previously recognized the SOFITEL mark’s worldwide reputation, making it unlikely that Respondent was unaware of Complainants’ proprietary rights in the mark. The composition of the Domain Name entirely reproduces Complainants’ trademark SOFITEL. Bad faith has previously been found by UDRP panels where a domain name is so obviously connected with a well-known trademark that its use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the SOFITEL trademark, Complainants argue that registration in bad faith can be inferred.
In addition, Complainants assert that Respondent could have provided an explanation of its choice of the Domain Name. However, Respondent failed to respond to Complainants’ cease-and-desist letter and subsequent reminders; therefore, Respondent neither tried to defend his rights nor to state any valid arguments to justify the registration of the Domain Name.
Moreover, Complainants state that Respondent failed to provide correct contact details. Even though Complainants sent a cease-and-desist letter by registered mail, this did not result in postal contact with Respondent, thus constituting a breach of the Domain Name’s registration agreement. On sending of the postal version of the cease-and-desist letter, it was returned to Complainants marked undelivered. Complainants assert that it is obvious that the postal address indicated in the WhoIs records for the Domain Name is incorrect, thus, making communication between Complainants and Respondent difficult. Consequently, in view of the above-mentioned circumstances, Complainants contend that Respondent registered the Domain Name in bad faith.
Complainants also state that previous UDRP panels have considered that, in the absence of any license or permission from a complainant to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
Complainants explain that the Domain Name resolves to a website under construction, which is considered an inactive page. Complainants state that this state of inactivity does not mean that the Domain Name is used in good faith. Passive holding does not preclude a finding of bad faith - a principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose. Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of Respondent’s behavior.
Complainants argue that the clear inference to be drawn from Respondent’s operations is that he is trying to benefit from the fame of Complainants’ trademark. Complainants argue that Respondent’s primary motive in registering the Domain Name was to capitalize on or otherwise take advantage of Complainants’ trademark rights through the creation of initial interest confusion. This behavior is likely to mislead the Internet users to link the Domain Name to that of Complainants. Moreover, an email server was configured using the Domain Name and thus, there might be a risk that Respondent is engaged in a phishing scheme. Therefore, the use of an email address with the Domain Name presents a significant risk where Respondent could aim at stealing valuable information such as credit cards from Complainants’ clients or employees. Such risk has been recognized by a prior UDRP panel.
Finally, Complainants contend that it is likely that Respondent registered the Domain Name to prevent Complainants from using its trademark in the Domain Name. This type of conduct also constitutes evidence of Respondent’s bad faith.
All aforementioned circumstances confirm that the Domain Name is used in bad faith. Consequently, Complainants contend that Respondent registered and is using the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainants have established rights in their well-known SOFITEL trademark, based on trademark registrations and use of the mark around the world, including in Egypt where Respondent appears to be located. Indeed, Complainant has strong rights in its well-known SOFITEL mark.
Further, the Panel determines that the Domain Name is confusingly similar to the SOFITEL mark. The Domain Name incorporates the mark in its entirety, while adding the two letters, “pg” as a prefix. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); General Motors LLC v. Carol Schadt, WIPO Case No. D2012-2106 (“[A] minor variation, such as adding a short letter or number group, or even generic or highly descriptive words, or geographic identifiers, such as a country name, to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion.”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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”.
Here, the Panel determines that Complainants have made out a prima facie case, while Respondent has failed to reply to Complainants’ contentions. The Panel finds that Complainants have not authorized Respondent to use their SOFITEL mark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a webpage that is marked under construction. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it, especially where Complainants sent Respondent a cease-and-desist letter where Respondent had an opportunity to respond and explain its registration of the Domain Name, but Respondent did not respond. See Regeneron Pharmaceuticals, Inc. v. Ron Smith, WIPO Case No. D2017-0219 (“Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark … [when] the disputed domain name resolves to an inactive webpage”). Thus, not only did Respondent fail to respond to the Complaint, Respondent also failed to respond to Complainants’ cease-and-desist letter and subsequent reminders.
Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainants have established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known SOFITEL mark, and targeted that mark, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SOFITEL trademark in its entirety, along with the two-letter prefix, “pg”. Respondent has provided no explanation for registering the Domain Name, and the Panel can think of no explanation for registering the term, “pgsofitel,” which alone does not correspond to an English, French or Arabic word. Given the fame of the SOFITEL mark, and the fact that the Domain Name is so obviously connected with Complainants’ mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SOFITEL mark when registering the Domain Name. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith”); see also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878 (“Knowledge and targeting [of a trademark] may be proven inferentially”).
Complainant indicated that the Domain Name connects to a webpage marked under construction. This fact alone may be insufficient evidence of bad faith use. However, when considered in combination with the close similarity between the Domain Name and Complainants’ famous and widely-known SOFITEL trademark, described above, and the following factors, the Panel determines that the Domain Name has been used in bad faith. The evidence indicates that Respondent provided false contact details in the registration records for the Domain Name. Complainants sent a cease-and-desist letter by registered mail to Respondent at the address listed in the WhoIs records, but it was returned to Complainants marked as undelivered. Complainant also sent the cease-and-desist letter by email but there was no response. At the same time, an email server was configured using the Domain Name and thus, there might be a risk that Respondent was planning to engage in a phishing scheme. Under the circumstances, Respondent could have responded to provide an explanation of its choice of the Domain Name and evidence of any actual or contemplated good faith use of the Domain Name. However, Respondent failed to respond to Complainants’ cease-and-desist letter and subsequent reminders. Thus, in this case where Respondent targeted Complainants’ well-known SOFITEL mark and failed to submit a response to the Complaint, and where the Panel observes that Respondent also failed to respond to the cease-and-desist letter sent by Complainants’ prior to the case, these circumstances, when considered in context with all of the other circumstances of case, support the Panel’s finding of bad faith registration and use.
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 <pgsofitel.com> be transferred to Complainant SoLuxury HMC.
Christopher S. Gibson
Date: September 18, 2018