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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR v. Digi Real Estate Foundation

Case No. D2006-0651

 

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Digi Real Estate Foundation, Panama City, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <sofitelhouston.com> is registered with Sssasss, Incorporated.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 26, 2006, the Center transmitted by email to Sssasss, Incorporated a request for registrar verification in connection with the domain name at issue. On June 15, 2006 the registrar eNom on behalf of Sssasss, Incorporated transmitted by email to the Center a verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on June 16, 2006 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 19, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 13, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on July 20, 2006. 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 Complainant is the European leader and one of the world’s largest groups in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90 countries worldwide. More particularly, the Complainant operates several hotels especially in Europe and in the USA.

The Complainant’s group holds, among others, the trademarks NOVOTEL, IBIS, and SOFITEL. The Sofitel brand is present in 52 countries around the world, with more than 189 hotels. The Complainant owns and mainly communicates on the Internet via the website “www.sofitel.com” in order to allow Internet users a quick and easy way of finding and booking its hotels.

Sofitel is the premium hotel brand of the Complainant and the Complainant runs famous hotels under the name Sofitel. Sofitel is a registered trademark protected worldwide in particular for hotels and restaurants. The Complainant is the owner of numerous trademark rights throughout the world related to its hotels under the SOFITEL brand, especially in the field of hotels and restaurants and of Internet services, among which are the following:

- SOFITEL, International Trademark n° 406255, filed on April 18, 1974, renewed and covering goods and services in all classes.

- SOFITEL, International Trademark n° 614992, filed on October 29, 1993, renewed and covering goods and services in classes 35, 36 and 37.

- SOFITEL, International Trademark n° 642172, filed on August 31, 1995 and covering goods and services in classes 35, 36, 37 and 42.

- HOTEL SOFITEL EXCLUSIVE CARD, International Trademark n° 719547, filed on August 16, 1999 and covering goods and services in class 42.

- SOFITEL ACCOR HOTEL & RESORTS, International Trademark n° 779873, filed on February 5, 2002 and covering goods and services in classes 16, 35, 42 and 43

- WORLD AND WORLD BY SOFITEL, International Trademark n° 786222, filed on April 26, 2002 and covering goods and services in classes 16 and 43.

- SOFITEL, US trademark n°79015763 filed on August 26, 2005 and covering services in classes 39 and 43.

- SOFITEL ACCOR HOTELS AND RESORTS, US trademark n° 78107333 filed on February 7, 2002 and covering services in classes 35 and 43.

- HOTEL SOFITEL EXCLUSIVE CARD, US trademark n° 75597827 filed on November 30, 1998 and covering services in class 42.

Copies of the corresponding trademark search results have been provided to the Panel.

The Complainant operates, among others, the domain name reflecting its trademark:

“www.sofitel.com“, which was registered on April 11, 1997.

The Complainant noticed that the disputed domain name had been registered. A Whois Database search revealed that this domain name was registered by the Respondent. The domain name is linked to a search engine proposing links to travel and hotels websites.

Since October 2005, the Complainant has tried to find an amicable settlement regarding the transfer of the domain name. The Respondent did not answer the registered mail and the several e-mails sent by the Complainant.

Before commencing the present Proceedings, the Complainant also sent a cease-and-desist letter, by registered letter and via e-mail, on October 25, 2005, to the Respondent, asking the Respondent to transfer amicably the disputed domain name based on its trademarks rights. A reminder was sent on November 28, 2005. The Respondent did not answer any of this mail.

As no amicable settlement has been found due to the Respondent’s bad faith, The Complainant subsequently filed the present Complaint.

 

5. Parties’ Contentions

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant contends that the disputed domain name <sofitelhouston.com> reproduces entirely the mark SOFITEL.

Besides, the Complainant contends, the mere addition of the term “houston” would lead people to think that this domain name is specific to the hotels of the Complainant in Houston in the USA, and is insufficient to avoid any confusion. Indeed, the Complainant owns a hotel located in Houston. Numerous WIPO UDRP decisions recognized that adding a generic word is insufficient to give any distinctiveness to the disputed domain name and a geographic term are generally considered as generic term. For example in PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629.

As a result, it clearly appears that the disputed domain name is strictly identical to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain directly refers to the Complainant’s services.

It constitutes a registration and a use in bad faith as it could lead average consumers to think that the domain name is related to the official Sofitel website.

For all the above-cited reasons, the Complainant contends that the Complainant has trademark rights in the name that is reproduced in its entirety in the domain name in dispute, and therefore the condition of Paragraph 4(a)(i) is fulfilled.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant contends that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating such marks.

Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The Respondent has never used the name Sofitel in any way before or after the Complainant started its business.

The Respondent is not known under the name Sofitel or any similar name.

The Complainant contends that the conduct of the Respondent is merely a parasitical behavior. The Respondent is not making any legitimate non-commercial or fair use of the domain names, as the disputed domain name is directed to a search engine proposing sponsored links to travel and hotels websites.

Panels in past UDRP cases have established that keeping a domain name that reproduces a well known mark inactive constitutes bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Moreover, the strict reproduction of the well-known trademark SOFITEL constitutes an obvious intent to misleadingly divert the Internet consumers.

In fact, since the disputed domain name is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.

For all the above-cited reasons, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name under Paragraph 4 (a)(ii) of the Policy.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that the name Sofitel does not have any meaning in Spanish or in English. The Respondent had no reason to choose this domain name other than profiting from the reputation of the Complainant.

The Complainant points out that cybersquatters often rely on the economic news to find potentially profitable domain names. For example, several UDRP cases concerned domain names registered simultaneously or a few weeks after the press announcement (Repsol YPF SA v. COMn.com, WIPO Case No. D2001-0741; Konica Corporation, Minolta Kabushiki Kaisha aha Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112).

With regard to the registration in bad faith, it seems obvious to the Complainant that the Respondent knew or must have known the trademark SOFITEL at the time it registered the domain name. It seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name as it clearly indicates the Respondent had the Complainant in mind when registering the disputed domain name.

The Complainant contends that the Respondent is trading on the goodwill existing in the Complainant’s famous service mark to intentionally attract Internet users to the Respondent’s website for purposes of commercial gain. This constitutes evidence of bad faith use and registration under paragraph 4(b)(iv) of the Policy. (Six Continents Hotels, Inc., v. Anti-Globalization Domains, WIPO Case No. D2003-0765; Yahoo! Inc. v. Data Art Corp., WIPO Case No. D2000-0587).

Moreover, it may be ascertained, along with the Panelist’s findings in Kapiteeli Oy v. John Denver, WIPO Case No. D2003-0333 - Annex 13) that “if the domain name should be kept in the Respondent’s name, there is a risk that the intellectual property rights of the Complainant could be infringed more seriously in the future, if the Respondent would cause the domain name to resolve to […] the web site of a competitor”. The continued existence of the disputed domain name in the name of the Respondent will erode the goodwill in the name and create confusion, as people accessing the Internet would associate the domain name with the Complainant, the trademark owner.

Thus, the Complainant contends that the Respondent registered the disputed domain name while being perfectly aware that it was infringing the Complainant’s rights.

In addition, the Complainant contends that the Respondent did not answer any of the Complainant’s emails. This behavior is an element of the bad faith of the Respondent. This kind of behavior has been considered as a clear absence of interest of the Respondent in proving the existence of a fair or legitimate interest on the domain name. This conduct confirms the bad faith of the Respondent (Banque Transatlantique S.A. v. DOTSCOPE, WIPO Case No. D2004-1100).

It also constitutes a registration and a use in bad faith as it could lead average consumers to think that the disputed domain name is related to the official Sofitel website or at least that it resolves to the official website for Sofitel hotels booking information. Besides, the Complainant notes that it owns a hotel in Houston and the domain name could lead potential clients of the Complainant to think that this is the official website of its hotel in Houston.

In sum the Complainant contends that the Respondent has registered the disputed domain name with the intention of profiting or by reselling this domain name to its rightful owner. This constitutes obvious evidence of both registration and use in bad faith under paragraph 4(b) (ii) of the Policy.

Accordingly, the Complainant contends that the Respondent has registered and is using the domain name in bad faith as defined in the paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in proceedings.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark SOFITEL, which is owned and has been commercially used and promoted by the Complainant exclusively in and for the purposes of its hotels business for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark SOFITEL is well-established and well-known and has a good reputation.

The Panel agrees with the Complainant’s contention that the addition of the suffix “houston” is irrelevant, for trademark purposes, in that it does not serve to distinguish the disputed domain name from the trademark of the Complainant. The main and recognizable part of the disputed domain name is the name Sofitel and the addition of the word “houston” is purely descriptive and, indeed, being geographical is not at all distinctive for trademark purposes. This view is consistent with previous UDRP decisions. See, for example, F. Hoffman-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-Rd, WIPO Case No. D2006-0047, in which the Panel found that “….the addition of the suffixes “information”, “purchase” and “dosage” are descriptive and add no distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant’s well-known trademark.”

In addition, the use of the descriptor ‘houston’, combined with the mark SOFITEL, which distinguishes the Complainant’s hotels, one of which is, in fact, located in Houston, is misleading and causes confusion in the market place amongst consumers and Internet users wishing to obtain information about the Complainant’s hotel in Houston.

The Respondent’s disputed domain name essentially incorporates the Complainant’s trademark SOFITEL.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark SOFITEL, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established, and commercially valuable rights through registration and also commercial use and promotion around the world, including the United States, for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue. Indeed, in view of the notoriety of the Complainant’s trademark SOFITEL, as well as its pre-existing domain name containing the trademark SOFITEL (cited above), which have been registered and used worldwide by the Complainant, the Respondent must or should have known that, when registering the disputed domain name, the Respondent could not reasonably have, or indeed, have reasonably claimed any such rights or interests. Also, the Respondent has not been authorized or licensed by the Complainant to use the disputed domain name.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name for a website that directs Internet users not to the Complainant but to the Respondent.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark SOFITEL is likely to lead to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website to the Respondent’s website (see further on this point below) and the links there to hotels which are competitors of the Complainant, with the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading, for commercial gain, on the good name, notoriety and reputation of the Complainant’s business and its trademark and thereby unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years in its name and mark around the world, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of circumstances, which if found by a Panel to be present constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its trademark SOFITEL over many years. Indeed, as previously mentioned, in the absence of any satisfactory explanation to the contrary (see below), the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s goodwill and thereby increase traffic to its web site. This conclusion is reinforced by the links on the website of the Respondent to several hotels which are competitors of the Complainant. This conduct constitutes bad faith. See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case D2005-0636, in which the panel held that “…the Respondent’s … opportunistic exploitation of inevitable Internet user confusion…..by way of increased Internet traffic he would not have otherwise attained….…..constitutes… bad faith.”

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, SOFITEL, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the case. Such misleading conduct, in the view of the Panel, is further evidence of bad faith on the part of the Respondent.

Finally, the failure of the Respondent to respond to the Complainant’s e-mails to settle this matter amicably and also the Complainant’s cease and desist letter, as mentioned above, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

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 the domain name, <sofitelhouston.com>, be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: July 26, 2006