WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Chenqi

Case No. D2018-1623

1. The Parties

The Complainants are Accor (the “First Complainant”) and SoLuxury HMC (the “Second Complainant”), both of Issy-Les-Moulineaux, France and represented by Dreyfus & associés, France.

The Respondent is Chenqi of China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <sofitel.pub> 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 July 18, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, 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 July 23, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On July 24, 2018, the Complainants confirmed their request that English be the language of the proceeding and, on the same day, the Respondent requested 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 English and Chinese of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Response was filed with the Center in Chinese on August 14, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 20, 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 Complainants are part of the Accor corporate group, headquartered in France, which operates more than 4,200 hotels worldwide. Sofitel is one of the group’s hotel brands. In China, the group operates 24 Sofitel hotels. The Second Complainant has registered multiple trademarks including international trademark registration number 863332 for SOFITEL, registered from August 26, 2005, and specifying administrative management of hotels, tourism and travel agencies, hotels services and other services in classes 35, 39 and 43. That trademark registration remains effective. The Second Complainant operates an official website at “www.sofitel.com” (the domain name having been registered in 1997), which provides information about itself and its hotels.

The Respondent is an individual located in China. His address is manifestly false as it lists the city of Beijing as a street address in Chengdu, Sichuan. Consequently, the Written Notice of the Commencement of Administrative Proceeding could not be delivered.

The disputed domain name was registered on March 15, 2017. It does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainants’ SOFITEL trademark. The disputed domain name reproduces that trademark in its entirety. The only difference between the Complainants’ SOFITEL trademark and the disputed domain name is the Top-Level Domain (“TLD”) suffix.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name “Sofitel”, in any way affiliated with the Complainants, nor authorized or licensed to use the trademark SOFITEL, or to seek registration of any domain name incorporating said trademark. The disputed domain name resolves to an inactive page.

The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainants when he registered the disputed domain name. The Complainants are well known throughout the world and its trademark SOFITEL is registered worldwide. The disputed domain name entirely reproduces the Complainants’ SOFITEL trademark. The Complainants sent a cease-and-desist letter to the Respondent but it could not be delivered because the contact details provided by the Respondent to the Registrar were incorrect.

B. Respondent

As regards the Respondent’s contact details, the Registrar did not require name authentication at the time of registration of the disputed domain name. The Respondent completed formal name authentication on March 29, 2018, which is a requirement of the national Internet policy. In any case, the Respondent had already provided his email address. He does not understand English and the Complainants’ letter did not reach him.

The Respondent asks how he could have offered the disputed domain name for sale prior to name authentication.

If the Second Complainant has a big reputation, does that mean that it is known to every person in every city in every country? As regards bad faith, this is nonsense; the disputed domain name has never been offered for sale, nor has any domain name registered by the Respondent ever been offered for sale, and the disputed domain name does not resolve to an active website, so how can there be bad faith use?

The Respondent has done nothing with the disputed domain name since it was registered, apart from name authentication. How can a domain name that does not resolve to an active website and has not been used take advantage of the reputation of Sofitel hotels? How can it mislead customers? Why did the Complainants not register their trademark in the “.pub” TLD or other TLDs before entering the Chinese market? Was it necessary for the Complainants to let someone else register their trademark in the “.pub” TLD and then demand that they give it up for free?

There are only 26 English letters; identical names are very common. If a man and a woman have the same name, it can hardly be said that they are the same person.

6. Discussion and Findings

6.1 Procedural Issues

A. Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group as the Second Complainant is a wholly owned subsidiary of the First Complainant. The Second Complainant owns the SOFITEL trademark. The Panel finds that the Complainants have a common grievance against the person named as the disputed domain name registrant and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Language of the Proceeding

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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the use of a language other than English would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings; and the disputed domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Chinese.

The Respondent requests that the language of the proceeding be Chinese. His main arguments are that he does not understand English because he is in China. He has learned a few words in school but this does not mean that he will completely understand everything in English. He used translation software to read the Complaint, which required him to download the files.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in the present proceeding the Complaint was filed in English and the Response in Chinese. The Panel notes that the Response does in fact respond to the contentions in the Complaint. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all documents as filed in their original language without translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Second Complainant has rights in the SOFITEL trademark.

The disputed domain name incorporates the SOFITEL trademark in its entirety. Its only additional element is the TLD suffix “.pub”. A TLD suffix is disregarded for the purposes assessment under this element of the Policy.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances, the Panel has already found that the disputed domain name is identical or confusingly similar to the Complainant’s SOFITEL trademark. The Complainant states that the Respondent is not in any way affiliated with the Complainant, nor authorized or licensed to use the SOFITEL trademark, or to seek registration of any domain name incorporating said trademark. The disputed domain name does not resolve to any active website. The Panel finds that that is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Chenqi”, and the user name associated with his email address is “Somnus”, neither of which resembles “Sofitel”. There is no evidence that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent confirms that he has not made any use or demonstrable preparations to use the disputed domain name. He does not allege that he is commonly known by the disputed domain name. Accordingly, he has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain name incorporates the Complainant’s SOFITEL trademark in its entirety, with no additional element besides a TLD suffix, which is a technical requirement of registration. The Respondent registered the disputed domain name many years after the Complainant registered its trademark, including in China where the Respondent is located. The Complainant’s SOFITEL trademark is a coined word with no other apparent meaning. The Respondent gives no explanation for his choice of the disputed domain name. Therefore, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that he registered the disputed domain name. The Panel finds that the Respondent registered the Complainant’s trademark in the disputed domain name in bad faith.

With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a considerable reputation in its SOFITEL trademark in the hotel industry due to its use of that trademark in connection with its services, including in China, where the Respondent is located, and through its official website. The Panel notes that the Respondent has provided manifestly false contact information in the Registrar’s WhoIs database, indicating an attempt to conceal his whereabouts. The Respondent gives no explanation of any proposed use of the disputed domain name. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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.pub> be transferred to the Second Complainant, SoLuxury HMC.

Matthew Kennedy
Sole Panelist
Date: August 29, 2018