The Complainant is Accor, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Thawan Laungrungthip, Bangkok, Thailand..
2. The Domain Names and Registrar
The disputed domain names <sofitelpatong.com> and <sofitelphuket.com>
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 23, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 24, 2006, Go Daddy Software 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, billing, 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”).
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 April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2006.
The Center appointed Angelica Lodigiani as the sole
panelist in this matter on May 10, 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
Accor was founded in 1967, by Paul Dubrule and Gérard Pélisson. It operates worldwide in a large range of services. Accor is the European leader and one of the world’s largest groups in travel, tourism and corporate services, running the famous Sofitel hotels. Around the world, there are more than 180 Sofitel prestigious hotels, including 35 in Asia and 9 in Thailand.
The Complainant owns and mainly communicates on the Internet via the websites “www.sofitel.com” and “www.sofitelhotel.com” in order to allow Internet users a quick and easy way to find and bookits hotels.
Accor is the owner of numerous trademark rights throughout the world, including in Thailand. In particular, Accor is the owner of SOFITEL international, community and French trademarks having a specification of goods and services mainly in the field of hotels and restaurants, among which are the following:
- SOFITEL, International trademark n° 406255, filed on April 18, 1974, and covering goods and services in classes 01 to 42;
- SOFITEL, International trademark n° 779873, filed on February 5, 2002, and covering goods and services in classes 16, 35, 42, 43;
- SOFITEL, International Trademark n° 0614992, filed on October 29, 1993, and covering services in classes 35, 36, 37;
- SOFITEL, US Federal trademark n° 0995968, filed on October 15, 1974, and covering goods and services in class 42;
- SOFITEL, US Federal trademark n° 78107333, filed on February 7, 2002, and covering goods and services in class 35 and 43;
- SOFITEL, French trademark n° 97675756, filed on April 29, 1997, and covering goods and services in class 38;
- SOFITEL, French trademark n° 1226253, filed on February 3, 1983, and covering goods and services in class 43;
- SOFITEL Accor Hotels and Resorts (semi-figurative), French trademark n° 3116639, filed on August 13, 2001, and covering goods and services in classes 16, 35 and 42;
- SOFITEL, French trademark n° 1240534, filed on May 27, 1983, and covering goods and services in class 16, 28, 35 and 42.
The Complainant noticed that the Respondent registered
the domain names <sofitelphuket.com> and <sofitelpatong.com> and
sent a warning letter to the Respondent on November 10, 2005, requesting their
voluntary transfer. The Respondent did not reply to the warning letter or to
two subsequent reminders. Thus, the Complainant started these proceedings.
5. Parties’ Contentions
A. Complainant
In relation to paragraph 4(a)(1) of the Policy, the
Complainant states that the domain names <sofitelphuket.com> and <sofitelpatong.com>
reproduce entirely the previous marks SOFITEL with the mere adjunction of the
words “phuket” and “patong”. The adjunction of the places
“phuket” and “patong” located in Thailand is descriptive
of the location of Sofitel hotels. The Complainant is well established in Thailand.
The adjunction of the terms “phuket” and “patong” could
lead consumers to think that the domain names <sofitelphuket.com> and
<sofitelpatong.com> are related to a Sofitel hotel in Phuket or in Patong
Beach in the Phuket Island. Moreover, the two contested domain names direct
to pages, which propose numerous commercial links related to travels and hotels
(Annex 9). Consequently, the adjunction of the terms “phuket” and
“patong” does not avoid the likelihood of confusion between SOFITEL
and <sofitelphuket.com> and <sofitelpatong.com>. Numerous URDP decisions
have recognized that adding a geographic name is insufficient to give any distinctiveness
to the domain name in dispute. The addition of a geographical name to a trademark
does not exclude confusing similarity. Adding the names “Phuket”
and “Patong” is a common method for specifying the location of business
services. Furthermore, the Complainant’s mark SOFITEL is widely known,
in particular in relation to hotel activities. Accordingly, the mere addition
of the terms “Phuket” and “Patong” in the domain names
is insufficient to avoid a likelihood of confusion with the Complainant’s
earlier SOFITEL trademarks. Hence <sofitelphuket.com> and <softelpatong.com>
are confusingly similar to the Complainant’s trademark SOFITEL (Accor
v. Everlasting Friendship Trust, WIPO
Case No. D2005-0626; Accor v. Everlasting Friendship Trust, WIPO
Case No. D2005-0288).
Concerning the Respondent’s lack of rights or legitimate interests in respect of the domain names, according to the Complainant, the Respondent is not its affiliate, nor has the Complainant authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said marks. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademarks or to apply for any domain name incorporating the said marks. Furthermore, the Respondent never used the term “SOFITEL” in any way before or after the Complainant developed its hotel-chain. The Complainant owns several SOFITEL trademarks and domain names, which are much earlier than the registration of the domain names <sofitelphuket.com> and <sofitelpatong.com>. More particularly, the Complainant registered the domain name <sofitel.com> in 1997 and by the time the Respondent registered the disputed domain names, the SOFITEL trademarks had been registered for years.
The Respondent is not making any legitimate non-commercial or fair use of the domain names. In fact, since the domain names in dispute are practically identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity under the registered domain names. In addition, the domain names redirect to websites with commercial links concerning travels and hotels.
Finally, the Respondent did not dispute the aforementioned
arguments nor provide information as to its interests in the domain names. This
behavior confirms the absence of any interest in said domain names (Accor
Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625, Annex 12).
With respect to registration and use in bad faith, because the concerned marks are famous, they enjoy a higher level of protection (Article 16(2) and (3) of the TRIPS Agreement). It is inconceivable that the Respondent has chosen to be so close to the previous and famous invented word SOFITEL in the domain names by accident. The Respondent knew or must have known the SOFITEL hotel chain and trademarks, at the time it registered the domain names and all the more as Accor and its subsidiaries run numerous hotels in Thailand. The registration of the disputed domain names tends to create in the public’s mind the impression that Accor owns domain names proposing commercial links for other hotel related companies. The registration of the domain names tarnishes the reputation of the SOFITEL mark, and therefore the Complainant.
Given the mere adjunction of non-distinctive elements to the Complainant’s trademarks such as the words “phuket” or “patong”, any actual or contemplated use of the domain names by the Respondent would be illegitimate, taking into account the fact that the mark SOFITEL is famous.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Since the Respondent did not submit any response and consequently did not contest any of the Complainant’s contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the allegations referenced in the headings of paragraphs A., B., and C. below.
A. Identical or Confusingly Similar
The Panel finds that the domain names <sofitelpatong.com> and <sofitelphuket.com> are confusingly similar to the Complainant’s trademarks SOFITEL.
As the Complainant correctly states, the mere addition of the geographical
terms “patong” and “phuket” to the Complainant’s
mark are insufficient to avoid a likelihood of confusion. The terms “patong”
and “phuket” indicate two different locations in Thailand where
the Complainant owns different hotels. Accordingly, it is extremely likely that
when viewing the domain names <sofitelpatong.com> and <sofitelphuket.com>
the Internet users would consider them to belong to the Complainant or to any
affiliate. Therefore, the terms “patong” and “phuket”,
rather than avoiding or at least diminishing the likelihood of confusion with
the Complainant’s earlier mark SOFITEL, increase it. Earlier UDRP decisions
have reached the same conclusion when the domain name at issue contains the
Complainant’s mark with the mere addition of geographical terms (see for
instance Accor v. Everlasting Friendship Trust,WIPO
Case No. D2005-0626, citing also Accor v. Everlasting Friendship Trust,
WIPO Case No. D2005-0288, which includes
a reference to some significant decisions relating to this matter).
For the aforementioned reasons, the Panel is satisfied that the condition under paragraph 4(a) (i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Proving a negative fact is always a very difficult task. The Policy, under paragraph 4(c), indicates a series of circumstances, which, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain names. However, the Respondent did not present any evidence nor convincingly argued that it has rights or legitimate interests in the domain names at issue. Accordingly, the Panel will consider whether the case established by the Complainant is sufficient to show the Respondent’s lack of rights and legitimate interests..
More specifically, according to the Complainant, the Complainant never authorized the Respondent to register its SOFITEL trademark as a domain name, nor is the Respondent affiliated with, or in any other way connected to, the Complainant. The Respondent is not known under the term Sofitel.
Finally, the Panelist considers that the Respondent is not making any legitimate non-commercial or fair use of the domain names. Since the conflicting domain names are practically identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity under the domain names at issue. The domain names redirect to websites with commercial links to travel and hotel services. The use of domain names reproducing third party’s well-known trademarks to promote competitors’ web pages cannot be considered a legitimate, non-commercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue, nor a use in connection with a bona fide offering of goods or services.
For all the reasons mentioned above, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain names <sofitelpatong.com> and <sofitelphuket.com>.
In consideration of the foregoing, the Panel is satisfied that the condition under paragraph 4(a) (ii) of the Policy is met.
C. Registered and Used in Bad Faith
The last condition that the Policy requires is provided under paragraph 4(a) (iii): i.e., that the domain names <sofitelpatong.com> and <sofitelphuket.com> have been registered and are being used in bad faith.
In the Panel’s view, the Complainant satisfactorily proved that the domain names <sofitelpatong.com> and <sofitelphuket.com> were registered and are being used in bad faith.
As far as registration in bad faith is concerned, the Respondent knew or must have known the well-known SOFITEL hotel chain and its trademarks, at the time it registered the domain names, even more so because the Complainant and its subsidiaries run numerous hotels in Thailand, where the Respondent is located. Therefore, it cannot be considered that the Respondent selected domain names containing the term SOFITEL followed by the name of a location simply by accident or by chance. On the contrary, most likely the Respondent registered the disputed domain names to unduly take advantage from, or cause detriment to, the distinctive character and/or the reputation of the SOFITEL mark.
For the aforementioned reasons the Panel takes the view that the Complainant registered the domain names <sofitelpatong.com> and <sofitelphuket.com> in bad faith.
As far as use in bad faith is concerned, any actual or contemplated use of
the domain names by the Respondent would be illegitimate, taking into account
the fame of the mark SOFITEL (other WIPO decisions recognized the reputation
of the SOFITEL trademark, e.g. Accor v. Park JungheeWIPO
Case No. D2004-0478; Accor v. Jose Manuel Fernandez Garcia, WIPO
Case No. D2002-0988,etc.).
The use of domain names including well-known third parties’ trademarks with the mere addition of geographical terms in order to promote competing web pages should be considered an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s 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 you’re the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. The domain names at stake tend to create in the public’s mind the impression that the Complainant owns domain names proposing commercial links for other hotel companies. The use of the domain names tarnishes the reputation of the SOFITEL mark, and therefore of the Complainant and its activities.
Due to the above considerations, the Panel concludes that the domain names <sofitelpatong.com> and <sofitelphuket.com> are being used in bad faith.
For all the reasons mentioned above, the Panel believes that the Complainant
satisfactorily proved also the third condition under paragraph 4(a) (iii) of
the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <sofitelpatong.com> and <sofitelphuket.com>, be transferred to the Complainant.
Angelica Lodigiani
Sole Panelist
Dated: May 24, 2006
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