WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Ha Viet Cuong

Case No. D2014-1366

1. The Parties

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

The Respondent is Ha Viet Cuong of TP HCM, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <sofitellegend.com> (“Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2014. On August 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The Center followed up with reminders on August 18, 22, 27, 29 and September 2, 2014. The Center’s reminder of August 27, 2014, informed the Registrar that the Center would need to proceed on the basis of certain assumptions if the Registrar did not provide a response by August 28, 2014. The Center set out these assumptions in its email to the Registrar of August 29, 2014, and stated that it would proceed on the basis that these assumptions were correct in the absence of any response to the contrary from the Registrar by September 1, 2014.

Having received no response from the Registrar by September 1, 2014, and on the basis of the publicly available WhoIs information, the Center verified that the Complaint, together with its Annexes, by the Complainants 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 in both English and Vietnamese of the Complaint, and the proceedings commenced on September 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2014.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 2, 2014. 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 Accor and its subsidiary SoLuxury HMC.

Accord, is a renowned corporation in the world for economic and mid-scale hotels, as well as in upscale and luxury hospitality services. It has been in the industry for over 45 years and operates more than 3,500 hotels in 92 countries worldwide and over 450,000 rooms, from economy to upscale. It includes the hotel chains PULLMAN, NOVOTEL, MERCURE, SOFITEL and IBIS.

Accor’s subsidiary, SoLuxury HMC, is the owner of many SOFITEL and SOFITEL LEGEND trademark registrations around the world. In Vietnam, the trademark SOFITEL, which is a French luxury hotel brand with a presence on five continents with 120 addresses in almost 40 countries with more than 30,000 rooms, is protected under International Registration No. 939096 dated of August 30, 2007, covering services in Classes 35, 36, 43 and 45. The trademark SOFITEL LEGEND, which is a collection of precious luxury properties and palaces, is registered under International Registration No. 963333 dated of April 23, 2008, covering services in Class 43. Hotel Metropole Hanoi, which was built in 1901, is a SOFITEL LEGEND in Vietnam.

SoLuxury HCM is also the owner of the domain name <sofitel.com>, which was registered on April 11, 1997, and <sofitel-legend.com>, which was registered on October 5, 2007.

The Disputed Domain Name was registered on December 21, 2013.

The Complainants sent a cease-and-desist letter to the Respondent on February 24, 2014. The Respondent did not reply despite several consecutive reminders.

5. Parties’ Contentions

A. Complainants

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights.

The Complainants assert that they own SOFITEL and SOFITEL LEGEND trademark registrations around the world. In Vietnam, the Complainants enjoy the trademark rights over SOFITEL in Classes 35, 36, 43 and 45 under the International Registration No. 963333 dated April 23, 2008, SOFITEL LEGEND in Classes 35, 36, 43 and 45 under the International Registration No. 939096 dated August 30, 2007.

The Complainants contend that they operate, among others, domain names reflecting their trademarks, namely <sofitel.com> registered on April 11, 1997, and <sofitel-legend.com> registered on October 5, 2007.

The Complainants allege that the Disputed Domain Name is similar to Complainants’ trademarks SOFITEL and SOFITEL LEGEND as it reproduces the Complainants’ famous trademark SOFITEL in its entirety, which previous panels have considered being “well-known” or “famous” in many UDRP decisions.

The Complainants further allege that the Disputed Domain Name is virtually identical to the Complainants’ domain name <sofitel-legend.com> easing eventual typing error by Internet users; thus, resulting to diversion from the Complainants’ site to that of the Respondent. Accordingly, the Complainants contend that by registering the Disputed Domain Name, the Respondent created a likelihood of confusion with the Complainants’ trademarks.

Finally, the Complainants assert that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainants’ trademarks and the Disputed Domain Name.

As such, the Complainants contend that the Disputed Domain Name is identical or confusingly similar to the trademarks SOFITEL and SOFITEL LEGEND, in which the Complainants have rights.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainants argue that the Respondent is not affiliated with the Complainants in any way nor has it been authorized by the Complainants to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks. Furthermore, the registration of the SOFITEL LEGEND trademark precedes the registration of the Disputed Domain Name for years. Additionally, the Disputed Domain Name is so identical to the famous SOFITEL trademark of the Complainants that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Disputed Domain Name.

The Complainants also contend that the Respondent is not commonly known by the name SOFITEL LEGEND, in any way affiliated with Complainants, nor authorized or licensed to use the SOFITEL LEGEND trademark or to seek registration of any domain name incorporating this mark.

The Complainants further contend that the Disputed Domain Name currently redirects towards “www.namejsc.com”, which is a website commercializing domain names for domain name investors in Vietnam and in the past, it redirected to “www.royalgarden.com.vn”, which was the homepage of a restaurant in Vietnam. This can lead to the inference that the Respondent has not made any reasonable and demonstrable preparations to use the Disputed Domain Name. Consequently, the Respondent failed to show any intention of noncommercial or fair use of the Disputed Domain Name by the Respondent.

Finally, the Complainants allege that the Respondent neither tried to demonstrate the reason of a domain name identical to Complainants’ trademarks and domain names, nor answered to Complainants’ cease-and-desist letter despite of several reminders.

Thus, the Complainants contend that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith

Registration in bad faith:

The Complainants argue that with the worldwide well-known status of the Complainants and their trademarks SOFITEL and SOFITEL LEGEND, and that the Disputed Domain Name reproduces entirely the Complainants’ trademark SOFITEL LEGEND, it is implausible that the Respondent was unaware of the Complainants’ trademarks at the time of registration and that opportunistic bad faith can be inferred in this case.

The Complainants contend that a quick SOFITEL LEGEND trademark or Google search would have revealed to the Respondent the existence of the Complainants and their trademark. With the advancement of the Internet and information technology, which helps the reputation of brands and trademarks transcends national border, it is therefore highly unlikely that the Respondent is unaware of the existence of the Complainants and their well-known reputation and trademarks when he registered the Disputed Domain Name.

The Complainants further contend that the Respondent has neither tried to defend his rights nor stated any valid arguments to justify the registration of the Disputed Domain Name in response to Complainants’ cease-and-desist letter, which could be considered as an inference of bad faith by previous panels.

Use in bad faith:

The Complainants contend that the Respondent knew or should have known of the Complainants’ trademark rights and, nevertheless registered the Disputed Domain Name in which it had no rights or legitimate interest, which could be considered as an inference of bad faith by previous UDRP panels.

The Complainants allege that no actual or contemplated bona fide or legitimate use of the Disputed Domain Name can reasonably be claimed by the Respondent in the absence of any license or permission from Complainants to the Respondent for the use of such widely known trademark, as ruled by previous panels.

The Complainants contend that the Respondent has not replied to the cease-and-desist letter or to the reminders sent by the Complainants, which could be considered as an inference of bad faith by previous UDRP panels.

The Complainants further contend that the Disputed Domain Name previously redirected to the homepage of a restaurant in Vietnam, whereas it presently redirects to a website commercializing domain names for domain name investors in Vietnam. This could be inferred by previous UDRP panels that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site”.

The Complainants alleges that Respondent’s primary motive in registering and using the Disputed Domain Name was to capitalize on or otherwise take advantage of Complainants’ trademark rights, through the creation of initial interest of confusion; and to prevent Complainants from reflecting their trademarks in the Disputed Domain Name. This type of conduct constitutes evidence of Respondent’s bad faith as ruled by a previous UDRP panel.

Consequently, the Complainants uphold that the Disputed Domain Name is registered and used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Procedural issues

(i) Lack of Registrar verification

Despite repeated attempts by the Center to contact the Registrar to, inter alia, ascertain whether the contact information available in the WhoIs database was correct, to ensure that the Disputed Domain Name registration had been locked (such obligation deriving implicitly from the prohibition on registrant transfer of a domain name registration during a pending UDRP proceeding under paragraph 8(a) of the UDRP), and to confirm (or otherwise) the jurisdiction, to which the Respondent had submitted in its Registration Agreement, the Registrar failed to make any verification.

Therefore, the Panel proceeds with issuing its decision on this case on the assumption that the information regarding the Respondent as published in the WhoIs database is correct.

(ii) The Respondent’s failure to respond

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainants (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010‑1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainants, the Panel will examine whether each of the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

B. Identical or Confusingly Similar

The Complainants are required to establish the two following elements: (1) that they have trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to their trademark(s).

First, the Panel finds that the Complainants have sufficiently evidenced that they have trademark rights in and to SOFITEL and SOFITEL LEGEND, which were registered well before registration of the Disputed Domain Name. Also, it is evidenced that the Complainants have a lengthy use of its trademarks SOFITEL and SOFITEL LEGEND for their commercial activities, particularly in offering hotels, restaurants and hospitality services worldwide.

Second, the Panel finds that the Disputed Domain Name comprises the Complainants’ distinctive and well-known trademarks SOFITEL and SOFITEL LEGEND, in which the Complainants have exclusive rights. The Panel also finds that the Disputed Domain Name incorporates the Complainants’ trademarks SOFITEL and SOFITEL LEGEND in their entirety.

Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008).

On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademarks SOFITEL and SOFITEL LEGEND, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular, but without limitation, which, if found by the Panel, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 a 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”.

The Panel finds that the Complainants have submitted contentions that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainants’ contentions and, therefore, did not refute the Complainants’ contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainants’ asserted facts, that no license, permission or authorization of any kind to use the Complainants’ trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in respect of SOFITEL and SOFITEL LEGEND in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademarks SOFITEL and SOFITEL LEGEND.

The Disputed Domain Name is currently redirected to the website “www.namejsc.com”, which is an active online domain name trading floor. In the past, it was redirected to “www.royalgarden.com.vn”, which was the website of a restaurant in Vietnam. In this regard, the Panel finds that :

(a) the SOFITEL and SOFITEL LEGEND trademarks, which constitute the distinctive element in the Disputed Domain Name are unique and specific to the Complainants for its hotel and hospitality services; however, the Respondent is redirecting the Disputed Domain Name to websites not relating anyway to the Complainants, and providing services in different commercial segments in comparison with the trademarked services;

(b) although there is no indication that the websites, which the Disputed Domain Name is redirected to, are related to the Respondent, in the absence of the Respondent’s arguments to the contrary, it may be reasonable to believe that the Respondent is using the SOFITEL and SOFITEL LEGEND trademarks in the Disputed Domain Name to bait consumers and then switch them to its or third parties’ services. This conduct may misleadingly divert consumers and tarnish the trademarks at issue.

(c) in various UDRP cases, the panels find that the use of the Disputed Domain Name merely to direct visitors to various third party commercial websites does not constitute a bona fide or legitimate, non-commercial use of the Disputed Domain Name under the Policy, see, e.g., Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, VIEW POINT BV v. Tsili, Anastasios Tsiligiannis, WIPO Case No. D2009-1118, EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012.

Therefore, the Panel concludes that the use of the Disputed Domain Name by the Respondent as mentioned above can be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name. Hence, paragraphs 4(c)(i) and 4(c)(iii) of the Policy are not applicable.

Further, the Panel finds that the Respondent is not mentioned anywhere in the websites which the Disputed Domain Name redirects to. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the Disputed Domain Name. Therefore, the Panel upholds that the Respondent has not been commonly known by the Disputed Domain Name, and paragraph 4(c)(ii) of the Policy is not applicable.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 a domain name in bad faith:

(i) circumstances indicating that you 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 on-line 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 web site or location”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainants have put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainants’ contentions and, therefore, did not refute the Complainants’ contentions.

Registration in bad faith

The Panel further finds that the Complainants’ trademarks SOFITEL and SOFITEL LEGEND have been registered on a worldwide basis, and enjoyed significant reputation. The Complainants’ trademarks have been in use in, among others, Vietnam where the Respondent resides.

The Complainants also own and operate the website under the domain name <sofitel-legend.com>, to which the Disputed Domain Name is virtually identical. Both the Complainants’ trademarks SOFITEL, which was first registered in Vietnam in 1974 under International Registration 406255, and SOFITEL LEGEND, which was registered in 2008, and domain name <sofitel-legend.com>, which was registered in 2012, well predate the Disputed Domain Name. SOFITEL, which is a coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainants and the Complainants’ trademarks SOFITEL and SOFITEL LEGEND and the Complainants’ domain name <sofitel-legend.com> before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainants’ goodwill.

Use in bad faith

As discussed earlier, the Respondent is using the Disputed Domain Name, which comprises the Complainants’ well-known marks SOFITEL and SOFITEL LEGEND in their entirety, to direct Internet users to commercial websites with no connection to the Complainant, or their trademarked services, or their trademarks SOFITEL and SOFITEL LEGEND.

The Panel further notes that the Disputed Domain Name is different from the domain name registered and used by the Complainants <sofitel-legend.com> by merely a dash. It appears that the Respondent’s use of the Disputed Domain Name is taking advantage of a typing error by eliminating the dash between “Sofitel” and “Legend” in the Disputed Domain Name, that users commonly make when searching on the Internet.

In this regard, the Panel finds that the Internet users when looking for the Complainant’s websites, may end up with visiting the Respondent’s websites, namely “www.namejsc.com”, and previously “wwwroyalgarden.com.vn”, which both are unrelated to the Complainant. Whether the Respondent is the underlying owner of these websites, or they are owned by third parties, and even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainants’ marks to attract users to its intended Internet locations.

Therefore, taking into account the mentioned discussions, and the previous finding that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that there is reasonable grounds to believe that the Respondent has used the Complainants’ well-known marks SOFITEL and SOFITEL LEGEND in a bid to divert Internet traffic intended for the Complainants and with bad faith to profit from the Complainants’ reputed trademarks by diverting traffic to either its own sites or to sites that pay for the traffic. In the Panel’s opinion, the Respondent’s actions are an attempt to take a free ride on the Complainants’ investment and to cash in on the confusion the Disputed Domain Name might cause.

With such facts, the Panel upholds that the Respondent is using the Disputed Domain Name to capitalize on the Complainants’ trademarks by intentionally attempting to attract Internet users to his or third parties’ commercial websites through the creation of a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv), and the third element under paragraph 4(a)(iii) of the Policy is established.

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 <sofitellegend.com> be transferred to the Complainants.

Pham Nghiem Xuan Bac
Sole Panelist
Date: October 16, 2014