WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Zhen Rong Li, Li Zhen Rong

Case No. D2018-1540

1. The Parties

The Complainants are Accor (the "First Complainant") and SoLuxury HMC (the "Second Complainant"), both of Issy-les-Moulineaux, France and represented by Dreyfus & associés, France.

The Respondent is Zhen Rong Li, Li Zhen Rong of Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <索菲特娱乐城.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same day, the Respondent sent an email in Chinese to the Center requesting assistance and information about the proceeding. On July 13, 2018, the Center transmitted an email in Chinese and English to the Respondent regarding the status of the proceeding, the next steps and the means to file a Response.

The Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding on July 16, 2018. On the following day, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. On August 15, 2018, the Center

re-notified the Respondent in English and Chinese of the Complaint, and the due date for Response was extended to August 20, 2018. The Respondent did not submit any formal Response. The Center notified the Parties of the Commencement of Panel Appointment Process on August 22, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 26, 2018. 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 part of the Accor corporate group, headquartered in France, which operates more than 4,100 hotels worldwide. Sofitel is one of the group's hotel brands, which counts around 131 hotels around the world. The Second Complainant has registered multiple trademarks including international trademark registration number 863332 for SOFITEL, registered from August 26, 2005, designating multiple jurisdictions including China and specifying administrative management of hotels, tourism and travel agencies, hotel and restaurant services and other services in classes 35, 39, and 43. That trademark registration remains effective. The Second Complainant operates an official website at "www.sofitel.com" (the domain name having been registered in 1997), which provides information about itself and its hotels.

The Respondent is an individual (Zhen Rong Li) and organization (Li Zhen Rong) named as registrant of the disputed domain name.

The disputed domain name was registered on May 3, 2017. It resolves to a website in Chinese that displays a banner that reads "索菲特彩票" (where 彩票means "lottery") and "234018.com". It also displays a logo featuring the letter "S". The website allows Internet users to buy lottery tickets and it displays lottery results.

The Complainants sent the Respondent a cease-and-desist letter in English dated April 16, 2018, and three subsequent reminders.

5. Parties' Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainants' trademark索菲特 (SOFITEL). The disputed domain name reproduces entirely the Complainants' trademark 索菲特 (SOFITEL) which previous panels have considered to be well known or famous. The disputed domain name adds the generic terms "娱乐" (entertainment) and "城" (city), hence Internet users might wrongly believe that the disputed domain name is somehow connected to the owner of the registered trademark. The generic Top-Level Domain ("gTLD") suffix ".com" is not to be taken into consideration when examining the identity or similarity between the Complainants' trademark and the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name "Sofitel", in any way affiliated with the Complainants, nor authorized or licensed to use the trademark 索菲特 (SOFITEL), or to seek registration of any domain name incorporating said trademark. The disputed domain name resolves to a gambling page displaying commercial links.

The disputed domain name was registered and is being used in bad faith. The Complainants are well known throughout the world and the trademark 索菲特 (SOFITEL) is registered worldwide. Several WIPO panels have mentioned its worldwide reputation. The Respondent has chosen the domain name <索菲特娱乐城.com>. Therefore, it is impossible that the Respondent did not have the Complainants' trademark 索菲特 (SOFITEL) in mind when registering it. The disputed domain name resolves to a gambling website. Although the content of the website is not related to the Complainants' field of activity, use of a website for unrelated goods or services clearly tarnishes the Complainants' mark. Such use of the domain name demonstrates the Respondent's intention to abusively benefit from the Complainants' reputation and particularly from its trademark SOFITEL. It is very likely that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainants' trademark rights, through the creation of initial interest confusion. This behavior is likely to mislead Internet users to link the disputed domain name to that of the Complainants. Finally, it is likely that the Respondent registered the domain name to prevent the Complainants from using its trademark in the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

6.1 Procedural Issues

A. Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both the Complainants form part of the same corporate group as the Second Complainant is a wholly owned subsidiary of the First Complainant. The Second Complainant owns the SOFITEL trademark. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as "the Complainant" except as otherwise indicated.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the use of a language other than English would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings; the proceeding would inevitably be delayed; and today English is the primary language for international relations and it is one of the working languages of the Center. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in the present proceeding the Complaint was filed in English. Despite having contacted the Center and received, in Chinese as well as English, information on the proceeding, an opportunity to comment on the language of the proceeding and the Written Notice, the Respondent did not indicate any interest in responding to the Complaint. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(i) the disputed 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 disputed domain name; and

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

Failure by the Complainant to prove any one of these elements will result in the Complaint being denied.

Paragraph 15(a) of the Rules provides that "[a] Panel shall 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 Respondent's failure to respond to the Complainant's contentions is not necessarily an admission that the Complainant's claims are true: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Second Complainant has rights in the SOFITEL trademark, written in Latin letters.

The disputed domain name does not incorporate the SOFITEL trademark, but it does incorporate the Chinese characters索菲特. The Complainant asserts in the Complaint that its trademark is "索菲特 (SOFITEL)" and it asserted earlier, in its cease-and-desist letter, that it owned numerous trademarks "索菲特". However, there is no evidence on the record of this proceeding that the Complainant has any rights in a trademark incorporating, or consisting of, Chinese characters. The Complainant only submits evidence of trademark registrations for SOFITEL written in Latin letters, either as a word mark or in different fancy scripts.

The Panel understands the Complainant to imply that the characters 索菲特are a translation of SOFITEL. The Complainant provides screenshots of the Second Complainant's official website in English, displaying the SOFITEL trademark in Latin letters, and Internet search results in the Google and Baidu search engines for the term "sofitel", also in Latin letters. However, the Panel observes that some of the Baidu search results translate索菲特酒店 (where 酒店means "hotel") and索菲特as "Sofitel". Further, the Panel notes that the characters 索菲特can be transliterated as "suŏfēitè" and bear an aural resemblance to the SOFITEL trademark. Therefore, based on the evidence and the aural resemblance of 索菲特to SOFITEL, the Panel accepts that 索菲特is a translation or transcription of SOFITEL.

The Panel recalls that a domain name that consists, or is comprised, of a translation or a transliteration of a trademark will normally be found to be identical or confusingly similar to such trademark for the purposes of standing under the Policy: see WIPO Overview 3.0, section 1.14.

In the present case, the disputed domain name does not consist solely of a translation or transcription of the Complainant's mark; it also includes the element 娱乐城 (translation: entertainment city). As two mere dictionary words, this element alone would not be sufficient to prevent a finding of confusing similarity under the first element, see WIPO Overview 3.0, section 1.8. Although this element is combined with a translation or transcription of the Complainant's trademark, rather than with the trademark itself, the Panel is willing to find that the disputed domain name is confusingly similar to the Complainant's trademark, because the first element of the Policy is a threshold test concerning a trademark owner's standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements: see WIPO Overview 3.0, section 1.7.

The disputed domain name also includes the gTLD suffix ".com". A gTLD suffix is generally disregarded in the assessment of confusing similarity for the purposes of the Policy.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Given the Panel's findings regarding the third element in paragraph 4(a) of the Policy, it is unnecessary to consider the second element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The second and fourth circumstances are as follows:

"(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."

As regards the fourth circumstance, the disputed domain name was registered in 2017, years after the Complainant registered its SOFITEL trademark in Latin letters, including in China, where the Respondent is located. The Complainant asserts that it is well known throughout the world, that its trademark "索菲特 (SOFITEL)" is registered worldwide and that several WIPO panels have mentioned its worldwide reputation. However, the Panel notes that the evidence on the record regarding the registration and reputation of the mark refers only to the SOFITEL trademark in Latin letters, which the disputed domain name does not contain. Although the Panel has accepted that 索菲特is a translation or transcription of SOFITEL, the same characters are also a transcription of SOFIT and SUOFEITE, while the evidence appears to show that "Sofitel" can also be translated as 索菲特酒店 (including in a search result pointing to the First Complainant's official website) or transcribed as 索菲特尔. The disputed domain name does not incorporate additional elements that would suggest that the Respondent was aware of the Complainant's services prior to this proceeding. The content of the website to which the disputed domain name resolves does not indicate any awareness of the Complainant's mark and it provides dissimilar services. The Complainant submits little evidence that Internet users would associate 索菲特 with SOFITEL. On the other hand, the Panel notes that the Respondent does not provide any explanation as to why it chose to include the characters 索菲特in the disputed domain name and in its website title. Nevertheless, on the basis of the record of this proceeding, the Panel is unable to find that the Complainant has made a prima facie case that the Respondent, by using the disputed domain name, has made an intentional attempt to attract Internet users by creating a likelihood of confusion with the Complainant's SOFITEL mark within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.

In light of the above analysis based on the evidence submitted by the Complainant, the Panel considers that this Complaint fails for want of a demonstration of the Respondent's bad faith. Should facts, arguments, or evidence subsequently come to light which would demonstrate bad faith on the Respondent's part, for example, targeting the mark索菲特for purpose of drawing consumers to its site, a future panel may entertain a refiling of this Complaint (on this topic, see section 4.18 of the WIPO Overview 3.0). In such circumstances, the Panel would expect the Complainant to provide evidence to suggest that the Respondent's intent behind registration and use of the disputed domain name incorporating the term "索菲特" was to target the Complainant so as to capitalize on consumer confusion as to the origin of the disputed domain name.

7. Decision

For the foregoing reasons, the Complaint is denied.

Matthew Kennedy
Sole Panelist
Date: September 3, 2018