WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA, SoLuxury HMC v. Orlando Andres Zunino, Sofia Project
Case No. D2018-1882
1. The Parties
Complainants are Accor SA and SoLuxury HMC, both of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
Respondent is Orlando Andres Zunino, Sofia Project of Buenos Aires, Argentina.
2. The Domain Names and Registrar
The disputed domain names are <hotelpullmancayococo.com>, <hotelpullmancayococo.website>, <hotelsofitelagadirthalassasea-spa.website>, <ibisbarranquilla.website>, <lediwanrabat‑mgallerybysofitel.website>, <mercureatenea-aventura.com>, <mercurequemadoalhoceimaresort.website>, <novotelcasablancacitycenter.website>, <novotelrjbotafogo.website>, <novoteltehranairport.website>, <pullmanmarrakechpalmeraie.website>, <pullmanmazaganroyal-golf-spa.website>, <sofitelagadirroyalbay.website>, <sofitelcasablanca‑tourblanche.website>, <sofitelessaouiramogador-golfspa.website>, <sofitelmarrakechloungeandspa.website>, <sofitelmarrakechpalaisimperial.website> and <sofitelrabatjardindesroses.website> which are all registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 20, 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 August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018.
On August 23, 2018, the Center received two emails in Spanish from a third-party offering to transfer the disputed domain names to Complainants. The Center requested the third party to clarify its identity. On September 4, 2018, Respondent sent two emails in Spanish indicating that it would like to transfer the disputed domain names to Complainants. Accordingly, the Center informed the Parties that if they wished to explore settlement options, Complainants should submit a request for suspension by September 12, 2018. Complainants did not request a suspension by the specified due date. On September 5, 2018, Respondent submitted a further informal email in Spanish, but did not file a substantive response. On September 13, 2018, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 21, 2018. This Panel finds that it was properly constituted. This 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
Complainant SoLuxury HMC has rights over the SOFITEL trademark for which it holds international registration No. 863332, registered on August 26, 2005 in classes 35, 39 and 43. Complainant Accor has rights over the following trademarks: IBIS for which it holds international registration No. 541432, registered on July 17, 1989 in classes 38, 39 and 42; MERCURE for which it holds international registration No. 615787 registered on December 20, 1993 in classes 8, 16 and 42; NOVOTEL for which it holds international registration No. 785645, registered on June 25, 2002 in class 43; PULLMAN for which it holds international registration No. 1197984 registered on November 28, 2013 in class 43; and M GALLERY BY SOFITEL and design for which it holds international registration No. 1258846 registered on April 9, 2015 in class 43 (all those trademarks, jointly the “Trademarks”).
The disputed domain names were created: <mercureatenea-aventura.com> on September 14, 2015, <novoteltehranairport.website> on January 4, 2018, <novotelrjbotafogo.website> on January 9, 2018, <lediwanrabat-mgallerybysofitel.website> on February 20, 2018, <hotelpullmancayococo.website> on February 26, 2018, <ibisbarranquilla.website> on March 5, 2018, <hotelpullmancayococo.com> on March 7, 2018. All other disputed domain names were created on February 23, 2018.
At the time the Complaint was filed, the disputed domain names were not linked to active websites, except for <hotelpullmancayococo.website>, <hotelpullmancayococo.com>, <mercureatenea-aventura.com> and <ibisbarranquilla.website> whose webpages showed, among others, the legends “tripEXPLORER”, “Content not found”, “No hotel or company found by domain”, “you can contact with […]@bedsbrokers.com”.
5. Parties’ Contentions
A. Complainants
Complainants’ assertions may be summarized as follows.
SoLuxury HMC is a subsidiary of Accor and both are acting against Respondent for the same grievance. Accor operates more than 4,000 hotels in 100 countries worldwide and over 600,000 rooms, from economy to upscale. The group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS, including approximately 10 hotels in Argentina among which are 1 SOFITEL, 1 PULLMAN, 2 MERCURE, 1 M GALLERY, 1 NOVOTEL and 4 IBIS hotels. Complainants and their trademarks enjoy a worldwide reputation.
Four of the disputed domain names were initially registered by Ana Iriarte, Sofia Projects. The other disputed domain names were initially registered by WMC Booking Zuninno, BedsBrokers. Complainants sent a cease and desist letter to the respective registrants requesting the transfer of the disputed domain names. After sending the letters, Complainants noticed that all disputed domain names had been transferred to Victor Verdugo Net, Verdugo Net and, accordingly, Complainants sent a cease and desist letter to the latter requesting the transfer of such disputed domain names, but no response was obtained.1 Later on Complainants noticed that all the disputed domain names have been transferred to Respondent. Afterwards, investigations showed that Respondent holds a portfolio of 219 domain names among which there are several domain names in the field of the hotel industry.2
Complainants and their affiliates, among other domain names reflecting their trademarks, operate <novotel.com> registered on April 10, 1997, <sofitel.com> registered on April 11, 1997, <mercure.com> registered on April 16, 1996, <pullmanhotels.com> registered on March 21, 1999, <ibishotels.com> registered on May 30, 2001, and <mgallery.com> registered on May 27, 2002.
The disputed domain names are identical or confusingly similar to the trademarks SOFITEL, PULLMAN, NOVOTEL, MERCURE, M GALLERY BY SOFITEL and IBIS in which Complainants have rights. The disputed domain names reproduce Complainants’ Trademarks with generic and/or geographical terms. The various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison under the Policy.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is neither affiliated with Complainants in any way nor has it been authorised or licensed by Complainants to use and register their Trademarks or to seek registration of any domain name incorporating the aforesaid trademarks. Respondent is not known by the names “Ibis”, “Sofitel”, “Pullman”, “Novotel”, “Mercure”, and “M Gallery By Sofitel”. Respondent has no prior rights or legitimate interests in the disputed domain names as Complainants’ trademarks were registered prior to the registration of the disputed domain names.
The disputed domain names are so identical to said Complainants’ well-known Trademarks that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names.
The disputed domain names <hotelpullmancayococo.website>, <hotelpullmancayococo.com>, <mercureatenea-aventura.com> and <ibisbarranquilla.website> resolve to a webpage showing “tripExplorer”, indicating that no hotel or company could be found and displaying an email address “[…]@bedsbrokers.com”. The other disputed domain names show that “no content was found for domain”. Previously, the disputed domain name <novoteltehranairport.website> directed to a webpage showing “Novotel Tehran Imam Khomeini International Airport” and displaying pictures and information on the Novotel hotel. After the first cease and desist letter, it changed and now shows that “no content was found for domain”.3 Therefore, it is obvious that Respondent is aiming at Complainants’ trademarks and activities. Such behavior cannot be regarded as a legitimate or fair use of the disputed domain names.
Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain names.
Respondent has not answered to Complainants’ cease and desist letters despite Complainants’ reminders. UDRP Panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to a complainant, it can be assumed that respondents have no rights or legitimate interests in the domain names.
The transfers of the disputed domain names after each of the cease and desist letters demonstrates Respondent’s lack of legitimate interests in the disputed domain names. This pattern of conduct cannot be regarded as a legitimate or fair use of the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Complainants are well-known throughout the world. Bad faith can be found where a respondent knew or should have known of complainant’s trademarks and, nevertheless registered a domain name in which it had no right or legitimate interest. Given the worldwide reputation and high level of notoriety of the Trademarks and the composition of the disputed domain names which incorporate six of Complainants’ trademarks, it is implausible that Respondent was unaware of them when it registered the disputed domain names.
Some of the active websites and the prior active website of <novoteltehranairport.website> were related to the field of hotels and to Complainant’s activities. Thus it is clear that Respondent was aware of the existence of the Trademarks at the time the disputed domain names were registered.
It is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party, which means that it was Respondent’s duty to verify that the registration of the disputed domain names would not infringe the rights of any third party before registering them. A quick trademark search would have revealed to Respondent the existence of Complainants and their trademarks. Respondent’s failure to do so is a contributory factor to its bad faith.
Respondent neither tried to defend its rights nor stated any valid arguments to justify the registration of the disputed domain names in response to Complainants’ cease and desist letters.
Respondent appears to be a cybersquatter as it is associated with several domain names in the field of the hotel industry. Previous UDRP panels have held that respondents involved in cybersquatting behaviour and who made multiple registrations are registrations made in bad faith.
In the absence of any license or permission from Complainants to use their widely-known Trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed by Respondent. Respondent is trying to benefit from the fame of the Trademarks. More likely, Respondent’s primary motive in registering and using the disputed domain names was to capitalize on or otherwise take advantage of Complainants’ trademark rights through the creation of initial interest of confusion.
The disputed domain names can be considered as inactive. Passive holding does not preclude a finding of bad faith. Reproducing famous trademarks in a domain name in order to attract Internet users to inactive websites cannot be regarded as fair use or use in good faith. It is likely that Respondent registered the disputed domain names to prevent Complainants from using the Trademarks in the disputed domain names. This type of conduct constitutes evidence of Respondent’s bad faith.
Complainants request that the disputed domain names be transferred to them as follows: (i) <pullmanmarrakechpalmeraie.website>, <pullmanmazaganroyal-golf-spa.website>, <hotelpullmancayococo.website>, <hotelpullmancayococo.com>, <novotelcasablancacitycenter.website>, <novotelrjbotafogo.website>, <novoteltehranairport.website>, <lediwanrabat-mgallerybysofitel.website>, <mercureatenea-aventura.com>, <mercurequemadoalhoceimaresort.website> and <ibisbarranquilla.website> to Accor; and (ii) <sofitelagadirroyalbay.website>, <sofitelcasablanca‑tourblanche.website>, <sofitelessaouiramogador-golfspa.website>, <sofitelmarrakechloungeandspa.website>, <sofitelmarrakechpalaisimperial.website>, <sofitelrabatjardindesroses.website> and <hotelsofitelagadirthalassasea-spa.website> to SoLuxury HMC.
B. Respondent
Respondent did not reply to Complainants’ contentions. As set forth above, on September 4 and 5, 2018, the Center received informal email communications from Respondent, which in essence read as follows: “with that domain we no longer have anything to do. we have already transferred it to second level. we are no longer using it” – “all mentioned domains no longer have the website. in case of error please let me know” – “I am ready to transfer all those domains without need of demands, only a godaddy number account must be provided to me and I transfer them without problems”.4
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The informal email communications from Respondent referred to above cannot be deemed as an official response since they do not comply with the requirements set forth in the Rules, paragraph 5(c). The lack of response from Respondent does not automatically result in a favorable decision for Complainants (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainants have rights over the Trademarks.
Since the addition of a gTLD suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.5 As set forth in the Complaint, each of the disputed domain names contains one of the Trademarks in its entirety, although with other terms or characters; it is clear to this Panel that the central element in each of the disputed domain names is one of the Trademarks, and thus the addition of other terms or characters in the disputed domain names does not avoid confusing similarity. Based on the aforesaid, it is clear that each disputed domain name is confusingly similar to one of those Trademarks.
Thus this Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is undisputed that the Trademarks are well-known. Complainants contend that they have no relationship with Respondent, they have not authorized Respondent to use the Trademarks, and that Respondent is not commonly known by the Trademarks. The evidence shows that all disputed domain names may be deemed inactive.
This Panel considers that Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain names by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using domain names which wholly incorporate the Trademarks (albeit with other descriptive or geographical terms or characters), this Panel considers that Respondent has no rights or legitimate interests in the disputed domain names.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainants contend that Respondent has registered and used the disputed domain names in bad faith, which Respondent chose not to rebut.
Taking into consideration that the registration and use of the Trademarks preceded the registration of the disputed domain names, Complainants international presence (including in Argentina, where Respondent is domiciled as per the WhoIs reports), that the Trademarks have become well-known around the world, and the changes of registrants of the disputed domain names subsequent to Complainants’ cease and desist letters, this Panel is of the view that Respondent must have been aware of the existence of Complainants and the Trademarks at the time of registration of each disputed domain name.6
The fact that Respondent registered the 18 disputed domain names, each incorporating one of the Trademarks (although with other geographic or descriptive terms or characters), simply reinforces the aforesaid and leads to infer that Respondent registered and used the disputed domain names in bad faith.7
Complainant supplied screenshots of the disputed domain names, whose content may be deemed as passive holding absent any actual offer of products or services or any information on any topic. Several UDRP decisions have held that the passive holding of a domain name that incorporates a well‑known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.8 It seems to this Panel that there are no bases to conceive a legitimate use of the disputed domain names by Respondent. In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Respondent is using the Trademarks at the disputed domain names (albeit with the addition of irrelevant terms or characters) without Complainants’ authorization; (ii) past use of the disputed domain name <novoteltehranairport.website>; (iii) Respondent’s registration of other domain names that, on their face, might also infringe third parties’ trademark rights (for instance, <achotellalinea.website>, <h10oceandreams.website>, <h10puntanegra.website>, <h10montcada.website>, and <hotelislazulcolina.com>); and (iv) the lack of Response, which is indicative that Respondent either has no interest in the disputed domain names or lacks arguments and evidence to support its holding of the disputed domain names.
Thus the overall evidence in the file leads this Panel to deduce that Respondent’s choice of the disputed domain names was deliberate for their substantial identity with, and with the likely intention to benefit from the reputation and goodwill of, the Trademarks, which denotes bad faith.9
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain names:
(i) <pullmanmarrakechpalmeraie.website>, <pullmanmazaganroyal-golf-spa.website>, <hotelpullmancayococo.website>, <hotelpullmancayococo.com>, <novotelcasablancacitycenter.website>, <novotelrjbotafogo.website>, <novoteltehranairport.website>, <lediwanrabat-mgallerybysofitel.website>, <mercureatenea-aventura.com>, <mercurequemadoalhoceimaresort.website> and <ibisbarranquilla.website> be transferred to Accor SA, and
(ii) <sofitelagadirroyalbay.website>, <sofitelcasablanca-tourblanche.website>, <sofitelessaouiramogador-golfspa.website>, <sofitelmarrakechloungeandspa.website>, <sofitelmarrakechpalaisimperial.website>, <sofitelrabatjardindesroses.website> and <hotelsofitelagadirthalassasea-spa.website> be transferred to SoLuxury HMC.
Gerardo Saavedra
Sole Panelist
Date: October 5, 2018
1 Cease and desist communications of March 13 and May 4, 2018. WhoIs reports showing changes of registrants attached to the Complaint.
2 Attached to the Complaint is the reverse WhoIs report. On September 24, 2018, this Panel accesed the corresponding WhoIs website and verified that Respondent appears as the registrant of several domain names listed in said reverse WhoIs report. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 Attached to the Complaint are screenshots of such disputed domain names.
4 In Spanish in the originals: “cn ese dominio ya no tenemos nada que hacer. ya lo hemos traspasado a segundo nivel. ya no lo estamos utilizando.” – “todos los dominios mencionados ya no tienen el sitio Web. en caso de error hagamelo saber porfavor” – “yo estoy dispuesto ah traspasar todos estos dominios sin necesidad de demandas. solo deven facilitarme un numero de ceunta de godaddy y los traspaso son problemas”.
5 As regards the M GALLERY BY SOFITEL and design trademark, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark. See Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, and Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092.
6 See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406: “the term ‘registration’ extends beyond the original act of registration and covers subsequent acquisitions of the domain name”. See also section 3.9 of the WIPO Overview 3.0.
7 See America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy”. See also section 3.1.2 of the WIPO Overview 3.0.
8 See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”. See also Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005, and section 3.3 of the WIPO Overview 3.0.
9 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.