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and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Pham Manh Ha
Case No. D2007-0316
1. The Parties
The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associйs, France.
The Respondent is Pham Manh Ha, Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <sofiteldalatpalace.com> is registered with
Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2007. On March 5, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On March 7, 2007 Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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”).
3.2 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 March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2007.
3.3 The Center appointed Mary Vitoria, QC as the sole panelist in this matter on April 19, 2007. 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.
3.4 The language of the proceedings is English. Parts
of some of the Annexes to the Complaint were in French. The Panel has decided
that English translations of the Annexes in question are not necessary for the
purposes of the determination of the issues.
4. Factual Background
4.1 The Complainant owns and operates one of the world’s largest groups in travel, tourism and corporate services. It owns about 4,000 hotels in 90 countries worldwide. In particular, the Complainant operates several hotels especially in Europe and in the USA and is the owner of numerous trademarks such as MERCURE, IBIS, NOVOTEL and SOFITEL. SOFITEL is the premium brand of the Complainant. Its SOFITEL chain is present in 52 countries around the world, with more than 189 hotels. In Vietnam, the Complainant owns and operates the Sofitel Dalat Palace Hotel at Dalat.
4.2 The Complainant is the owner of numerous trademarks SOFITEL throughout the world in respect of hotels and restaurant services, including:
- SOFITEL, International Trademark No. 406255, filed on April 18, 1974, renewed and covering goods and services in all classes.
- SOFITEL, International Trademark No. 863332, filed on August 26, 2005, covering goods and services in classes 35, 39 and 43.
- SOFITEL ACCOR HOTEL & RESORTS, International Trademark No. 779873, filed on February 5, 2002, covering goods and services in classes 16, 35, 42 and 43.
- WORLD AND WORDS BY SOFITEL, International Trademark No. 786222, filed on April 26, 2002, covering goods and services in classes 16 and 43.
The above-identified trademarks are each protected in Viet Nam. The Complainant has exhibited some of the relevant registrations as Annex 10 to the Complaint.
4.3 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. It also operates the following domain names: <.sofitel.com>, registered on April 11, 1997; <sofitel.ch>, registered on December 20, 2000; <sofitel.lu>, registered on December 21, 2000; <sofitel.org> registered on April 30, 2001; <sofitel.info>, registered on October 2, 2001; <sofitel.biz>, registered on November 19, 2001; <sofitel.us>, registered on April 19, 2002; <sofitel.ca>, registered on January 30, 2003; <sofitel.cz> registered on June 12, 2003; <sofitel.co.uk>, registered on December 11, 2003; <sofitel.fr>, registered on August 5, 2004; <sofitel.es>, registered on September 29, 2005; <sofitel.pt>, registered on March 14, 2006; and <sofitel.mobi>, registered on September 19, 2006.
4.4 The Respondent is an individual, resident in Vietnam. Use of the domain name in dispute leads to the website “www.luxurytravelvietnam.com”. This is the website of Luxury Travel Co., Ltd (Vietnam) and it offers the facility of internet booking for a wide range of holidays in Vietnam, Cambodia and Laos. It is possible to book the Complainant’s SOFITEL hotels in Vietnam using this website, including the Complainant’s SOFITEL Dalat Palace Hotel. The address and telephone contact details of Luxury Travel Co., Ltd. (Vietnam) are the same as those of the Respondent.
4.5 In the course of correspondence between the Complainant and the Respondent in the period October 24, 2006 to November 30, 2006, the Respondent asserted that he did not “trade or do any thing on your branding name SOFITEL. We only point the registered domain name to other website at my favorite” and offered to sell the disputed domain name to the Complainant for US$10,000 and later for 10,000 euros.
4.6 The Complainant requested that the domain name
in dispute, sofiteldalatpalace.com>, be transferred to it.
5. Parties’ Contentions
5.1 The Complainant submits that it runs famous hotels under the name SOFITEL. SOFITEL is a well-known trademark protected worldwide in particular for hotels and restaurants. The Complainant’s trademarks are very well-known especially in the field of hotels and restaurants and of Internet booking services including in particular: SOFITEL, International Trademark No. 406255 covering goods and services in all classes, SOFITEL, International Trademark No 863332, covering goods and services in classes 35, 39 and 43, SOFITEL ACCOR HOTEL & RESORTS, International Trademark No 779873, covering goods and services in classes 16, 35, 42 and 43 and WORLD AND WORDS BY SOFITEL, International Trademark No 786222 covering goods and services in classes 16 and 43, all being protected in Vietnam. It also operates a large number of domain names incorporating the mark SOFITEL.
5.2 The disputed domain name <sofiteldalatpalace.com> reproduces the whole of the SOFITEL trademarks and is identical or at least confusingly similar to the SOFITEL trademarks. Adding a geographic name is insufficient to give any distinctiveness to the domain name in dispute and the addition of a geographical name to a trademark does not exclude confusing similarity. Dalat is a city located in Viet Nam and the addition of the term “Dalat” in the domain name does not distinguish the trademark SOFITEL from an association with the Complainant in the consumer’s mind.
5.3 The Complainant contends that its trademarks SOFITEL are well established in Viet Nam and, in addition, it owns a SOFITEL hotel in Dalat, the name of which is “Sofitel Dalat Palace”. Consequently, the conjunction of the term “Dalat” could lead consumers to think that the domain name <sofiteldalatpalace.com> is related to the Complainant’s SOFITEL hotel in Dalat. Thus, the conjunction of the term “Dalat” increases the likelihood of confusion between “SOFITEL” and the disputed domain name <sofiteldalatpalace.com>.
5.4 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) of the Policy is fulfilled.
5.5 The Respondent is not affiliated with the Complainant in any way and the Complainant has not authorized the Respondent to use and register its SOFITEL trademark and service marks, or to seek the registration of any domain name incorporating the mark. Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The Respondent has never used the term “SOFITEL” in any way before or after Complainant started their business.
5.6 The Respondent is not known under the name “SOFITEL” or any similar term. The conduct of the Respondent is merely parasitical behaviour. The Respondent is not making any legitimate non-commercial or fair use of the domain name, as the domain name in dispute promotes SOFITEL’s competitors hotels in Viet Nam. Moreover, the strict reproduction of the well-known trademark “SOFITEL” constitutes an obvious intent to misleadingly divert Internet consumers. In fact, since the domain name in dispute is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend he was intending to develop a legitimate activity. For all the above reasons, in the Complainant’s opinion, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect of the domain name in dispute under Paragraph 4 (a)(ii) of the Policy.
5.7 The name “SOFITEL” does not have any meaning in English or in Vietnamese. The Respondent had no reason for choosing the domain name in dispute other than the one of profiting from the reputation of the Complainant. With regard to registration in bad faith, it seems obvious that the Respondent knew or must have known of the trademark “SOFITEL” at the time he registered the domain name. The Complainant submits that it would be difficult to maintain that the Respondent was not aware of the existence of the Complainant at the time he registered the domain name. The Respondent did not dispute having knowledge of Complainant’s trademark in his email of November 12, 2006.
5.8 Furthermore, the disputed domain name reproduces precisely the name of the hotel owned by the Complainant in Dalat, “Sofitel Dalat Palace”. Thus, it seems obvious that the Respondent did not choose the disputed domain name by coincidence. Moreover, the Respondent’s website is dedicated to travel in certain Asian countries and advertises hotel bookings in those countries. Thus the Respondent by this website has the same activity as that of the Complainant. The Complainant contends that this element constitutes evidence not only that the Respondent knew of the SOFITEL trademark at the time he registered the domain name in dispute and consequently demonstrates the Respondent’s bad faith with regard to the registration of the disputed domain name but also that he has used the disputed domain name in order to attract internet users for commercial gain.
5.9 The Respondent reproduces SOFITEL’s logo in the website. This fact demonstrates in an obvious way that the Respondent must have known of the SOFITEL trademark at the time he registered the disputed domain name. The continued existence of the domain name in dispute in the name of the Respondent will erode the goodwill in the name and create confusion, as people accessing the Internet would associate the said domain name with Complainant, who is the trademark owner. All the above mentioned circumstances confirm that the disputed domain name was registered in bad faith.
5.10 It appears that the Respondent registered the disputed domain name <sofiteldalatpalace.com> in order to make a profit from his illegitimate registration, as it clearly appears from the correspondence that he is offering to sell it for 10.000 USD and later for 10.000 € (13.200 USD). This constitutes obvious evidence of both registration and use in bad faith under Paragraph 4(b) (ii) of the Policy.
5.11 Accordingly, the Complainant submits, the Respondent has thus registered and is using the domain name in bad faith as defined in the Paragraph 4(a)(iii) of the Policy.
5.12 The Respondent did not reply to the Complainant’s
6. Discussion and Findings
6.1 According to paragraph 15(a) of the Rules, the Panel must decide a 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.
6.2 In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, 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 may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:
A. Identical or Confusingly Similar
6.5 It is clear that the Complainant has established world-wide rights in the trademark SOFITEL, including in Vietnam, in relation to the business of owning and operating hotels and taking bookings for those hotels over the internet by means of its websites.
6.6 The domain name registered by the Respondent has as its prefix the trademark SOFITEL to which a geographical name “Dalat” has been added followed by the word “palace”. In its basic meaning, “palace” denotes the official residence of a sovereign and, more generally, a stately and luxurious mansion but it is now in frequent use in connection with luxury hotels. The word SOFITEL has no meaning in English or in Vietnamese and, in the three word combination of the domain name in dispute, the word SOFITEL serves as the distinctive indicator of trade origin.
6.7 It has been determined by UDRP panels in numerous precedents that the mere
addition of a geographical name to a trademark does not exclude confusing similarity.
See, for example, Accor v. Everlasting FriendshipTrust, WIPO
Case No. D2005-0626 and Wal-Mart Stores Inc v. Walmarket Canada, WIPO
Case No. D2000-0150. Equally the addition of a ccTLD or gTLD to the mark
does not avoid confusing similarity. See, for example, Telstra Corp Ltd v.
Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 The Panel agrees with the Complainant’s submission that the use of the term “palace” in the domain name in dispute increases the likelihood of confusion not only because the word “palace” may sometimes denote a luxury hotel but also because the Complainant owns the Dalat Palace Hotel in Dalat and the domain name <sofiteldalatpalace.com> would be regarded by many as being the website of the Complainant’s hotel.
6.9 The Panel finds that there is a high risk of confusion between the Respondent’s domain name and the Complainant’s trademark SOFITEL and that this risk of confusion includes the risk that the disputed domain name will be associated with the Complainant.
B. Rights or Legitimate Interests
6.10 There is no evidence of any rights or legitimate interest of the Respondent in the domain name. Indeed, in his correspondence with the Complainant, the Respondent acknowledged that the word SOFITEL was the Complainant’s “brand”.
6.11 The Complainant has not licensed or otherwise permitted the Respondent to use its trademark SOFITEL or to apply for any domain name including this trademark. It has prior rights in the trademark SOFITEL which precede for many years the Respondent’s registration of the domain name.
6.12 The Respondent and Luxury Hotels Co. Ltd. (Vietnam), which operates the website “www.luxuryhotelsvietnam.com” share the same address and telephone number and, in correspondence with the Complainant, the Respondent referred to the link between the domain name in dispute and the website. The Panel infers that, at the very least, the Respondent gave permission to Luxury Hotels Co. Ltd. (Vietnam) to use the domain name in dispute as a link to its website. The use made by the Respondent of the domain name has thus been in connection with a website which operates in competition with the business of the Complainant, at least to the extent of advertising and taking bookings for competitors’ hotels. This website clearly seeks, by reason of the adoption of a confusingly similar domain name which leads to the site, to mislead people into thinking that they have accessed a website operated by or connected with the Complainant. Such use is not legitimate. The Panel accepts the evidence that the Respondent had no rights or legitimate interests in the domain name <sofiteldalatpalace.com>.
C. Registered and Used in Bad Faith
6.13 According to paragraph 4(b)(i) of the Policy, circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name is evidence of the registration and use of a domain name in bad faith.
6.14 On receipt of a cease and desist letter dated October 24, 2006 from the Complainant’s legal representatives, the Respondent offered to sell the disputed domain name to the Complainant for US $10,000, later for 10,000 euros. However, as the Respondent pointed out, the domain name in dispute links to a website “www.luxurytravelvietnam.com” which is in operation as an internet hotel and travel booking service. The Panel is not convinced that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant or one of its competitors. The offer to the Complainant could well have been merely opportunistic.
6.15 According to paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed web site or location or of a product or service on said web site or location is regarded as evidence of bad faith.
6.16 The Complainant submits that bad faith is shown by the fact that the Respondent knew or must have known of the Complainant’s SOFITEL hotel business when he registered and subsequently used the domain name in dispute and that the Respondent both registered and has used the disputed domain name in connection with an internet site for the purpose of attracting internet users to the site for his own commercial gain.
6.17 The Panel is satisfied on the evidence that the Respondent knew of the Complainant’s SOFITEL hotel business when he registered and used the disputed domain name. The word SOFITEL has no meaning in English or Vietnamese. The Respondent is in the business of internet hotel booking and in correspondence referred to the mark SOFITEL as “your” - meaning the Complainant’s - brand. There is no natural connection between the word SOFITEL and the Respondent. The Panel draws the conclusion that the only reason the Respondent chose the domain name was to associate himself and his business with that of the Complainant and to profit from its reputation and thereby to attract internet users to the website, “www.luxurytravelvietnam.com” for commercial gain.
6.18 The Panel concludes that by registering and using
the disputed domain name, the Respondent intentionally attempted to attract,
for commercial gain, Internet users to the said website by creating a likelihood
of confusion with the Complainant’s trademark SOFITEL as to the source,
sponsorship, affiliation, or endorsement of the website through the use of the
disputed domain name <sofiteldalatpalace.com>. The Panel concludes that
the Respondent registered and has used the disputed domain name in bad faith.
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 <sofiteldalatpalace.com> be transferred to the Complainant.
Mary Vitoria, QC
Dated: May 3, 2007