WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Cong ty Cp Dau tu Tai chinh va Phat trien Thuong mai Quoc te A Chau

Case No. D2012-0061

1. The Parties

The Complainants are Accor and SoLuxury HMC, both of Paris, France represented by Dreyfus & associés, France.

The Respondent is Cong ty Cp Dau tu Tai chinh va Phat trien Thuong mai Quoc te A Chau of Ha Noi, of Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <novotelbeachresorts.com>, <novotelmandalay.com>, <novotelyangon.com>, <phuquocnovotelresort.com>, <sofitelbeachresorts.com>, <sofitelmandalay.com>, <sofitelngapaliresort.com>, <sofitelphanthietresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com>, <sofitelresortngapali.com>, <sofitelresortphuquoc.com>, <sofitelyangon.com> and <sofitelyangonhotel.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 17, 2012, 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.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. An informal communication from the Respondent was received by the Center on February 8, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 15, 2012. 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 major world-wide hotel operators and operate more than 4,200 hotels in 90 countries. Accor operates a number of hotel chains including Pullman, Novotel, Mecure and IBIS. SoLuxury HMC is a subsidiary of Accor and operates the Sofitel chain of hotels.

The Complainants operate 11 hotels in Viet Nam, including 3 Sofitel hotels and 3 Novotel hotels.

The Complainants have registered a device mark consisting solely of the word “Sofitel” (the “SOFITEL Mark”) as a trade mark around the world including in Viet Nam, where the SOFITEL Mark has been registered since August 30, 2007. The Complainants have registered a device mark consisting of a blue square with the word “Novotel” written in white in a prominent position and the words ”Accor Hotels” in smaller writing below it (the “NOVOTEL Mark”) as a trade mark around the world since December 9, 2005. This mark has not been registered in Viet Nam. In this Decision, the NOVOTEL Mark and the SOFITEL Mark will be referred to collectively as the “Complainants’ Marks”.

The disputed domain names <novotelbeachresorts.com>, <novotelmandalay.com>, <novotelyangon.com>, <phuquocnovotelresort.com>, <sofitelbeachresorts.com>, <sofitelmandalay.com>, <sofitelngapaliresort.com>, <sofitelphanthietresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com>, <sofitelresortngapali.com>, <sofitelresortphuquoc.com>, <sofitelyangon.com>, <sofitelyangonhotel.com>(the “Domain Names”) were registered between November 18, 2010 and February 27, 2011 as set out in the table below.

At the time of the notification of the Complaint, none of the Domain Names resolved to an active website.

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

(i) that the Domain Names are confusingly similar to either the Complainants’ SOFITEL Mark or the Complainant’s NOVOTEL Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainants consist of Accor and its subsidiary SoLuxury HMC (“Luxury”). Accor and Luxury contend that as members of the same group of companies they constitute an entity for the purposes of initiating a proceeding under the UDRP.

The Complainants, through Accor, are the operators of the Novotel chain of hotels. Accor operates 445 hotels in 19 countries in the Asia Pacific Region. This includes 3 Novotel Hotels in Viet Nam, one of which is located in PhanThiet. The Complainants have registered the NOVOTEL Mark as a trade mark throughout the world. In particular the Complainants received an International Registration for the NOVOTEL mark on December 9, 2005 which has the effect of registering the NOVOTEL Mark in numerous countries.

The Complainants, through Luxury, are the operators of the Sofitel chain of hotels. Sofitel hotels exist in 52 countries, including 3 in Viet Nam. The Complainants have registered the SOFITEL Mark as a trade mark throughout the world. In particular the Complainants received an International Registration for the SOFITEL mark on August 30, 2007 which has the effect of registering the SOFITEL Mark as a trade mark in Viet Nam.

The Complainants also own a number of domain names linked to websites that are used to book hotels and promote their services, including <sofitel.org>, <sofitel.com> and <novotel.com>. These domain names were registered in 2001, 1997 and 1997 respectively.

The Domain Names are identical or confusingly similar to the Complainants’ Marks, as each of them reproduce either the NOVOTEL or SOFITEL Mark in its entirety. The domain names <novotelmandalay.com>, <novotelyangon.com>, <sofitelmandalay.com>, <sofitelphuquoc.com> and <sofitelyangon.com> reproduce the Complainants’ Marks and add a geographic term as a suffix. The domain names <novotelbeachresorts.com> and <sofitelbeachresorts.com> reproduce the Complainants’ Marks and add the descriptive terms “beach” and “resorts” as a suffix. The domain names <phuquocnovotelresort.com>, <sofitelngapaliresort.com>, <sofitelphanthietresort.com>, <sofitelphuquocresortandspa.com>, <sofitelresortngapali.com>, <sofitelresortphuquoc.com> and <sofitelyangonhotel.com> reproduce the Complainants’ Marks and add a geographic term and one of the descriptive terms “resort”, “spa” or “hotel”. The addition of geographic terms and/or the addition of descriptive terms that relate to the Complainants’ business is insufficient to distinguish the Domain Names from the Complainants’ Marks.

The Respondent has no rights or legitimate interests in the Domain Names as the Respondent is not in any way affiliated with the Complainants, nor have the Complainants authorized or licensed the Respondent to use the Complainants’ Marks, or to register a domain name incorporating the Complainants’ Marks. The Respondent is not commonly known by the names “Sofitel” or “Novotel”. Moreover, prior to receiving any notice of the dispute from the Complainants, the Respondent did not demonstrate any demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.

It is implausible that the Respondent was unaware of the Complainants when he registered the Domain Names. This is because the Complainants’ Marks are well-known, including in Viet Nam, where the Respondent is located. Secondly, the Respondent registered 14 domain names, all incorporating at least one of the Complainants’ Marks. This cannot be a coincidence. Finally, had the Respondent conducted any search for the words “novotel” or “sofitel” using a search engine prior to registration, he would have been aware of the existence of the Complainants. Therefore the Domain Names were registered in bad faith.

Since registration the Respondent has passively held the Domain Names, none of which are currently active. This lack of action, combined with the awareness of the Complainants’ Marks at the time the Domain Names were registered amounts to use in bad faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

The due date for Response was February 7, 2012. An informal communication from the Respondent was received by the Center on February 8, 2012. While this communication was out of time, the Panel did review it. Other than indicating that the e-mail address was active, the communication does not make any submission on any issue that is relevant to this proceeding and is of no relevance to the Decision.

6. Discussion and Findings

A. Identical or Confusingly Similar

To satisfy paragraph 4(a)(i) of the Policy the Complainants must have trade or service mark rights, and the Domain Names must be identical or confusingly similar to the Complainants’ Marks.

The Complainants are the owner of the SOFITEL Mark, having registrations for SOFITEL as a trade mark throughout the world, including in Viet Nam, where the Respondent is based. The SOFITEL Mark is also a well-known mark, as confirmed in previous UDRP decisions, including Accor, SoLuxury HMC v. PrivacyProtect.org, n/a Ian Harding, WIPO Case No. D2011-0863; Accor, SoLuxury HMC v. Yunsung, WIPO Case No. D2010-2198; and Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574.

The Complainants are the owner of the NOVOTEL Mark having registrations for NOVOTEL as a trade mark throughout the world. The fact that the NOVOTEL Mark is not registered in Viet Nam is of no relevance to this element of the Policy. The wording of paragraph 4(a)(i) of the Policy requires that a complainant have rights in a trade mark or service mark. It does not require that rights in the mark be established, either through registration or common law rights, in the respondent’s location. If this were the case, it would be impossible to prove this element if a respondent was using a fake address or a privacy service to hide its location. If a complainant cannot establish trade mark rights in the respondent’s location, this may have relevance when determining if a respondent was aware of the complainant’s mark, but not to the question of whether a complainant has rights in a trade mark pursuant to paragraph 4(a)(i) of the Policy.

The NOVOTEL Mark is a composite word and device mark, of which the word “novotel” is one element. Since a domain name cannot include device elements, the Domain Names cannot be identical to the NOVOTEL Mark, nor can they reproduce the NOVOTEL Mark in its entirety. This does not prevent the Complainants from establishing confusing similarity between the NOVOTEL Mark and the Domain Names that incorporate the word “novotel”. The dominant element in the NOVOTEL Mark is the word “novotel”, which is the term which would be used by consumers when referring to the Complainants’ Novotel chain of hotels. Because domain names cannot include device elements, Internet users must seek a website by typing in the word elements of word and device marks. In a case of a composite word and device mark with a dominant word element such as “novotel”, Internet users would expect that the dominant element would be reproduced in a domain name, as is the case with the website at “www.novotel.com”, which promotes the Novotel chain and is owned by the Complainants. Past UDRP decisions have found that a domain name can be similar to a composite word and device mark if it reproduces the key word element(s) in the mark, see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699 and SWATCH AG v. Stefano Manfroi, WIPO Case No. D2003-0802.

Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a geographical term is confusingly similar to the complainant’s trade mark – see Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ACCOR v. Vu Duy Truong, WIPO Case No. D2011-0093. This is because the mere addition of a geographical term is not sufficient to provide any distinctiveness to a domain name. Therefore the Panel finds the domain names <novotelmandalay.com>, <novotelyangon.com>, <sofitelmandalay.com>, <sofitelphuquoc.com> and <sofitelyangon.com> confusingly similar to the Complainants’ Marks as they reproduce the SOFITEL Mark or the dominant element of the NOVOTEL Mark and add a geographical term.

Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a descriptive term is confusingly similar to a complainant’s trade mark - see Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc., WIPO Case No. D2010-1064. This is especially the case when the descriptive term is related to a good or service provided by the complainant. Therefore the Panel finds the domain names <novotelbeachresorts.com> and <sofitelbeachresorts.com> confusingly similar to the Complainants’ Marks as they reproduce the SOFITEL Mark or the dominant element of the NOVOTEL Mark and add a descriptive term.

Finally the Panel finds that the domain names that consist of the SOFITEL Mark or the dominant element of the NOVOTEL Mark, a geographical term and a descriptive term relating to a good or service provided by the Complainants to be confusingly similar to the Complainants’ Marks. The domain names <phuquocnovotelresort.com>, <sofitelngapaliresort.com>, <sofitelphanthietresort.com>, <sofitelphuquocresortandspa.com>, <sofitelresortngapali.com>, <sofitelresortphuquoc.com> and <sofitelyangonhotel.com> are confusingly similar to the Complainants’ Marks.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainants in any way and has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the SOFITEL Mark or the NOVOTEL Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Complainants have established a prima facie case that the Respondent lacks rights or interests in the disputed domain name.

In correspondence with the Complainants, the Respondent indicated that he registered the Domain Names for unspecified private needs. However, in the absence of any evidence of what those private needs are, the Panel cannot reach a conclusion that the Respondent has a legitimate interest in the Domain Names. The Respondent has chosen not to respond to the Complaint in any meaningful manner and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainants who are the owners of the trade marks or service marks or to a competitor of those Complainants, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Names; or

(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

The Respondent has asserted, in correspondence with the Complainants’ legal representatives that he was unaware of the Complainant’s Marks at the time he registered the Domain Names. The Panel finds this claim to be implausible as a matter of logic.

The Respondent registered the domain names <phuquocnovotelresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com> and <sofitelresortphuquoc.com> on November 18, 2010. Collectively, these 4 domain names incorporate both the dominant element of the NOVOTEL Mark and the SOFITEL Mark. It is implausible to this Panel that an individual who was unaware of the Complainants could have registered domain names that incorporate two dissimilar hotel brands owned by the Complainants by accident. Secondly, these 4 domain names incorporate the descriptive terms “resort” and “resortandspa”. These terms describe the services offered by the Complainants under their Novotel and Sofitel hotel brands. Finally, the reputation of the Complainants internationally and in Viet Nam, where they operate 3 Sofitel and 3 Novotel hotels, makes it implausible to this Panel that the Respondent was unaware of either the NOVOTEL or SOFITEL Mark at the time he registered these 4 domain names. This is especially the case because, in communications between the Respondent and the Complainants’ legal representatives, the Respondent reveals that he is connected with a travel agency known as Asiana Travel and thus would be expected to have specialist knowledge of hotels in Viet Nam.

Following the registration of <phuquocnovotelresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com> and <sofitelresortphuquoc.com> the Complainants’ legal representatives wrote to the Respondent on December 23, 2010. The Respondent replied on December 27, 2010 and continued to correspond with the Complainants’ legal representatives until February 10, 2011. When the Respondent registered the remaining 10 domain names that are the subject of this proceeding, on February 25, 2011 and February 27, 2011, he was on notice of the Complainants’ rights in the Complainants’ Marks.

The registration of the Domain Names in awareness of the Complainants’ Marks and in the absence of rights or legitimate interests amounts to registration in bad faith. Furthermore, the Panel finds that the Respondent, by registering 14 separate domain names that contain the Complainants’ Marks, was engaged in a pattern of conduct to prevent the Complainants from reflecting the Complainants’ Marks in corresponding domain names. This is registration in bad faith pursuant to paragraph 4(b)(ii) of the Policy.

The Domain Names are currently inactive, and there is no evidence that they have been used by the Respondent for any purpose. They are, in essence, being passively held by the Respondent. Telstra, discussed supra, established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.

A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:

a) The Respondent was aware of the Complainant at the time he registered domain names <phuquocnovotelresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com> and <sofitelresortphuquoc.com>;

b) Following correspondence between the parties, the Respondent proceeded to register 10 additional domain names containing the Complainants’ Marks;

c) The domain names have been registered for between 11 and 14 months and no use has been made of them;

d) The Respondent is connected with the travel industry and thus could benefit from the association between the Domain Names and the Complainants to promote his business; and

d) The Respondent has not chosen to participate in this proceeding in any meaningful way.

On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Names in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that disputed domain names <novotelbeachresorts.com>, <novotelmandalay.com>, <novotelyangon.com>, <phuquocnovotelresort.com>, <sofitelbeachresorts.com>, <sofitelmandalay.com>, <sofitelngapaliresort.com>, <sofitelphanthietresort.com>, <sofitelphuquoc.com>, <sofitelphuquocresortandspa.com>, <sofitelresortngapali.com>, <sofitelresortphuquoc.com>, <sofitelyangon.com> and <sofitelyangonhotel.com> be cancelled.

Nicholas Smith
Sole Panelist
Dated: February 19, 2012