WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soluxury HMC, Accor v. Arash Ebrahimpour
Case No. DIR2017-0024
1. The Parties
The Complainants are Soluxury HMC and Accor, both of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Arash Ebrahimpour of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <sofitel.ir> (the “Domain Name”) is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 15, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 16, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on December 20, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2018. On January 18, 2018, the Center notified the Respondent’s default.
The Center appointed Gareth Dickson as the sole panelist in this matter on January 30, 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, Soluxury MHC, is the owner of international trade mark registration for SOFITEL, No. 863332, registered on August 26, 2005 (the “Mark”). The Mark designates Iran and covers services in class 35, 39 and 43.
The Domain Name was created on November 23, 2011, and registered by the Respondent on January 22, 2017. Since then the Domain Name has either not resolved to an active website, or it has resolved to a website offering the Domain Name for sale as a “Brands” domain name.
The Complainants sent a cease-and-desist letter to the Respondents via registered letter and email on February 14, 2017 in which they requested transfer of the Domain Name free of charge. The letter sent via registered post was returned and indicated that the Respondent had “gone away” from the address listed on the WhoIs. The Complainants emailed the Respondent a reminder of their request for transfer on February 21, 2017, and on February 22, 2017 the Respondent replied stating: “Dear sir I am domain seller I don’t us any domain name I only sell it and I never sell domain free of charge the price of your domain name is $2000 Regards”.
5. Parties’ Contentions
The Complainants contend that the Domain Name is confusingly similar to the Mark. Indeed, it reproduces the Mark (i.e. SOFITEL) in its entirety. The Complainants also allege that as a result of their extensive use of the Mark, the public will reasonably assume that the Domain Name is owned by, or at least is economically related to, the Complainants.
The Complainants submit that the Respondent is not affiliated with them in any way and has not been authorized by them to use the Mark or to register a domain name incorporating it. Moreover, the Respondent is not commonly known by the name “Sofitel” and has no rights or legitimate interests in the Domain Name: the Respondent has not made any reasonable and demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods or services and has not shown any intention of noncommercial or fair use of the Domain Name.
The Complainants submit that the Respondent registered the Domain Name to prevent the Complainants from registering it and/or to sell it for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name. They contend that it is implausible that the Respondent was unaware of the Complainants when he registered the Domain Name, not least in light of their SOFITEL mark being well-known throughout the world and being reproduced in its entirety within the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
i. the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. the Domain Name has been registered or is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel finds that the first Complainant has rights in the Mark, that is, in SOFITEL. The Panel also finds that the Domain Name is identical to the Mark, since the country code Top-Level Domain (“ccTLD”) “.ir” does not in any way distinguish the Domain Name from the Mark.
The Panel therefore finds that the Domain Name is identical to a trade mark in which the first Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant establishes 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.
In the current proceeding, the Complainants have established their prima facie case, having alleged that the Respondent is not affiliated with them and has not been authorized by them to use the Mark or to register a domain name incorporating it. The Panel also notes that the Respondent has either not used the Domain Name to resolve to a website or, when it has made such use of the Domain Name, has used it to resolve to a website which offers the Domain Name for sale for significantly in excess of the Respondent’s out-of-pocket expenses. There is no evidence before the Panel that the Respondent has made any reasonable and demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods or services, nor has the Respondent shown any intention of making noncommercial or fair use of the Domain Name.
Since the Respondent has not submitted any evidence or arguments to meet his burden of production to rebut the prima facie case made out by the Complainants, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered or Used in Bad Faith
Under the Policy it is not necessary for a complainant to establish that a domain name has been registered in bad faithand is being used in bad faith: either element will suffice.
In the current proceedings, the Panel accepts that the Respondent must have known of the Complainants’ rights in SOFITEL when it registered the Domain Name. The Domain Name is being offered for sale as a “brands” domain name, and no reason has been given (nor is any apparent) for the Respondent to have chosen to incorporate “Sofitel” in the Domain Name otherwise than as a reference to the first Complainant’s SOFITEL trade mark. This is sufficient to establish that the Domain Name was registered in bad faith.
Furthermore, the use of the Domain Name as a means of generating profit for the Respondent at the Complainants’ expense is sufficient to establish that the Respondent is using the Domain Name in bad faith.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith.
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.ir> be transferred to the first Complainant, Soluxury HMC.
Date: February 13, 2018