WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA, Swissôtel Management GmbH v. Haseeb Rahman
Case No. D2018-1736
1. The Parties
The Complainants are Accor SA of Issy-Les-Moulineaux, France and Swissôtel Management GmbH of Kloten, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Haseeb Rahman of Dubai, United Arab Emirates ("UAE").
2. The Domain Name and Registrar
The disputed domain name <swissotel-dubai.com> ("Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 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 for the Disputed Domain Name.
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 August 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on August 27, 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 network of Swissôtel Hotels & Resorts was founded in 1980 in Zurich, Switzerland. Today the Swissôtel chain is present in 17 countries in 46 cities, including the United Arab Emirates, Dubai. The Complainant Swissôtel Management GmbH from 2015 is a wholly owned subsidiary of the Complainant Accor SA, which in turn, operates more than 4,300 hotels in 100 countries all over the world.
The Complainant Swissôtel Management GmbH is the owner of the following trademark registrations:
- United Arab Emirates Trademark "SWISSÔTEL" No. 5271, registered on June 13, 1996, for services in class 42;
- International Trademark "SWISSÔTEL" No. 652800, registered on September 18, 1995, for services in class 42;
- European Union Trademark "SWISSÔTEL" No. 002285567, registered on November 8, 2002, for services in classes 35, 41 and 42.
The Complainants operate a domain name <swissotel.com>, registered on December 16, 1996, for sale and promotion of their wide variety of services.
The Disputed Domain Name <swissotel-dubai.com> was registered on February 10, 2018 and directs to a parking page which displays sponsored links related to hotel services.
5. Parties' Contentions
The Complainants indicate that after they became aware of the Respondent's registration of the Disputed Domain Name and before starting the present proceeding, they made efforts for resolving the matter amicably. On April 16, 2018, the Complainants sent a cease-and-desist letter to the Respondent requesting the Respondent to transfer the Disputed Domain Name to the Complainants free of charge.
The Respondent replied on April 23, 2018, arguing that he was not using "Swissotel" but rather "Swissotel-dubai" which are two different entities.
On April 24, 2018, the Complainants sent a further letter to the Respondent requesting the transfer of the Disputed Domain Name free of charge, to which, on April 24, 2018, the Respondent replied that he has reserved this domain name for his future business and that he would transfer the Disputed Domain Name if the Complainants give him a compensation for it.
The Complainants contend that the Disputed Domain Name is confusingly similar to their SWISSÔTEL trademark as it reproduces their trademark in its entirety. The Complainants also noted that addition of the geographic term "dubai" to the Disputed Domain Name makes the Internet users think that this domain name is operated by the Complainants who own Swissôtel hotels in Dubai, UAE.
The Complainants further contend that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name in view of the fact that he is neither affiliated with the Complainants in any way nor has been authorized or licensed by the Complainants to use and to register the SWISSÔTEL trademark or to seek registration of any domain name incorporating the SWISSÔTEL trademark. The Complainants also assert that the Respondent is not known by the name of "swissôtel" and has failed to show any intention of non-commercial or fair use of the Disputed Domain Name.
The Complainants allege that the Respondent has registered and is using the Disputed Domain Name in bad faith since it is impossible that the Respondent was not aware of the Complainants' trademark and activities when he registered the Disputed Domain Name. The Complainants also contend that the Respondent uses the Disputed Domain Name to direct the Internet users to a webpage displaying sponsored links related to the Complainants' field of activities.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainants demonstrated that they have rights in the SWISSÔTEL trademark in view of a number of SWISSÔTEL trademark registrations in different jurisdictions, including the UAE, and long use of this trademark. The SWISSÔTEL trademark has been recognized as "distinctive" and "widely known" by previous panels, see e.g., Accor SA / Swissôtel Management GmbH v. Data Protected/Hilmi Kurklu, Kurkly Bilisim Insaat Taahhut Ve Ticaret, WIPO Case No. D2018-1217; Swissôtel Management GmbH v. BellName Privacy Protection Service / chen guofu / chen haiying, WIPO Case No. D2012-1521.
The Disputed Domain Name clearly reproduces the SWISSÔTEL trademark completely (with the exception of the circumflex on the letter "o") with addition of a hyphen, the geographical term "dubai" and the generic Top-Level Domain ("gTLD") "com". Addition of a hyphen does not in any way eliminate the confusing similarity. The gTLD ".com", as a standard registration requirement, should also be disregarded under the confusing similarity test.
Under the 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. The addition of the geographical term "dubai" to the Disputed Domain Name does not prevent a finding of confusing similarity of the Disputed Domain Name with the Complainants' trademark.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the SWISSÔTEL trademark and accordingly the Complainants have satisfied with the first element of the Policy.
B. Rights or Legitimate Interests
For the purpose of demonstration of the Respondent's lack of rights or legitimate interest in the Disputed Domain Name, the Complainants assert that their SWISSÔTEL trademark preceded the registration of the Disputed Domain Name for years, that the Respondent has not been commonly known by the name of "swissôtel", he has not been authorized or licensed by the Complainants to use and register the Complainants' trademark, or to seek registration of any domain name incorporating the SWISSÔTEL trademark.
The Disputed Domain Name resolves to a parking page that contains sponsored links related to hotel services. According to the WIPO Overview 3.0, section 2.9 applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users.
In this case, the parking page to which the Disputed Domain Name resolves, includes pay-per-click links. In view of this the Panel finds that the Respondent has registered the Disputed Domain Name to use and to get a benefit from the Complainants' SWISSÔTEL trademark's goodwill by increasing his pay-per-click revenues, that cannot by any means be considered as a right or legitimate interest in the Disputed Domain Name.
With respect to the Complainants' statement that the Disputed Domain Name was registered for the purpose of selling it for valuable consideration in excess of documented out-of-pocket costs, the Panel finds that it is not certainly clear from the evidences in this case that the Respondent registered the Disputed Domain Name for the only purpose of its sale to the Complainants. However, the Respondent's offer to sell the Disputed Domain Name by receipt of "compensation for the domain" makes it clear that the Respondent does not have an intention of a bona fide offering of goods or services or of legitimate non-commercial use of the Disputed Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In light of the above, 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 indicates the following circumstances, but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [respondent] 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 web site or other online 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 website or location.
In view of the fact that the Complainants have a number of hotels throughout the world and are undoubtedly well-known hospitality companies, it is very unlikely that the Respondent could be unaware of the Complainants, of their activity and of their SWISSÔTEL trademark rights. Taking into account that the Disputed Domain Name contains the Complainants' SWISSÔTEL trademark in its entirety (with the exception of the circumflex on the letter "o") combined with the geographical term "dubai" where the Complainants also have a hotel under the SWISSÔTEL trademark, it is very unlikely that the Respondent chose the Disputed Domain Name accidentally.
Further, taking into consideration the fact that the Respondent was already a respondent in a previous UDRP dispute (Bulgari S.p.A. v. Haseeb Rahman, WIPO Case No. D2017-1310), where the disputed domain names contained also a well-known trademark, it is very unlikely that he registered the Disputed Domain Name without any intention to attract the Internet users to his website by creating a likelihood of confusion with the Complainants' SWISSÔTEL trademark as to the source, sponsorship or affiliation. Thus, it is apparent that the primary purpose of the registration of the Disputed Domain Name was to to mislead Internet users seeking the Complainants and consequently to derive benefit from the confusion between the Disputed Domain Name and the Complainants' trademark rights. Therefore, the Panel finds that the Respondent's actions with respect to the Disputed Domain Name must be determined as bad faith.
Finally, the Respondent, not participating in these proceedings, has failed to indicate any facts and/or evidences, which would show the fair registration and use of the Disputed Domain Name.
Therefore, having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is 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 <swissotel-dubai.com> be transferred to the Complainant.
Date: September 10, 2018