WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Peter Milosheff

Case No. DAE2019-0002

1. The Parties

The Complainants are Accor and SoLuxury HMC of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Peter Milosheff of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <sofitel.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On February 27, 2019, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 March 6, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2019.

The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 28, 2019. On March 28, 2019, the Center received an informal communication from the Respondent denying any connection with the disputed domain name and the Center advised the Panel that the Respondent repeated this denial in a subsequent email.

The Center appointed James Bridgeman as the panelist in this matter on April 9, 2019. 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 Complaint was filed by two complainants against a single respondent. Both of the Complainants form part of the same corporate group as the second named Complainant is a wholly owned subsidiary of the first named Complainant. The second named Complainant owns the SOFITEL trademark including the following registrations:

- SOFITEL, International trademark no. 863332 designating, inter alia, Australia, Republic of Korea, Norway, Turkey, United States of America, registered on August 26, 2005, duly renewed, covering services in classes 35, 39 and 43;
- SOFITEL, International trademark no. 939096 designating, inter alia, Japan, Republic of Korea, Mexico, Singapore, Turkmenistan, registered on August 30, 2007, duly renewed, covering services in classes 35, 36, 43 and 44;
- SOFITEL, United Arab Emirates (“UAE”) trademark no. 011745 registered on September 9, 1996, duly renewed, covering services in class 42.

In addition, the Complainants claim to be the owners of the domain name <sofitel.com> which was registered on April 11, 1997.

The disputed domain name was registered on November 8, 2018 and resolves to a page entitled “SOFITEL LUXURY HOTELS” consisting of links which redirected Internet users to the Complainants’ official websites.

The only information available about the Respondent is that which has been given in the Complaint and in subsequent correspondence with the Center. While he did not file a Response to the Complaint, he did engage in correspondence in reply to the Complainants’ cease and desist letter in March 2019 which is consistent with his ownership and control of the disputed domain name. However subsequently in correspondence with the Center by email on March 28, 2019, relating to this Complaint, he denies that he has any connection with the disputed domain name and stated: “I am not the owner of the domain in question. Stop e-mailing me. I do not wish to hear from you again.” According to the WhoIs, he has given a false address. The courier engaged by the Center found it impossible to deliver the hard-copy documentation but the Respondent has demonstrated by his subsequent communications with the Center that he has been served with the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainants request that the disputed domain name be transferred to the second named Complainant.

The Complainants state that the first named Complainant is a leading global hotel operator. Since it was founded in 1967, it has acquired considerable reputation and goodwill worldwide, including in UAE where it has approximately 47 hotels offering more than 14,000 rooms and operating more than 4,200 hotels in 100 countries worldwide with over 600,000 rooms, from economy to upscale. The Complainants’ group includes notable hotel chains such as SOFITEL, RAFFLES, ONEFINESTAY, FAIRMONT, MGALLERY, PULLMAN, SWISSOTEL, GRAND MERCURE, NOVOTEL, MAMA SHELTER, MERCURE and IBIS. The second named Complainant is the owner of the above SOFITEL service mark registrations and has acquired considerable goodwill and renown worldwide in the use of the mark, with over 130 SOFITEL hotels around the world, including four hotels in the United Arab Emirates.

The Complainants submit that the disputed domain name is identical or confusingly similar to the SOFITEL service mark in which the Complainants have rights acquired through its abovementioned trademark registrations and its extensive worldwide use of the SOFITEL mark.

The Complainants argue that the disputed domain name <sofitel.ae> reproduces entirely the Complainants’ SOFITEL service mark and assert that this is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainants’ registered trademark.

The Complainants submit moreover that the mere adjunction of the country-code Top‑Level Domain (“ccTLD”) “.ae” should not be taken into consideration in the assessment of similarity between the disputed domain name and the Complainants’ mark.

The Complainants also argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name; that the Respondent has no prior rights or legitimate interests in the disputed domain name; that the registration of the trademark SOFITEL preceded the registration of the disputed domain name by years; that the Respondent is not affiliated with the Complainants in any way, nor has he been authorized or licensed by the Complainants to use the trademark SOFITEL, or to seek registration of any domain name incorporating said trademark; that the Respondent is not commonly known by the name “SOFITEL” or the disputed domain name given the notoriety surrounding the Complainants’ trademark and the fact that it is exclusively associated with the Complainants.

Neither is there any evidence that the Respondent is commonly known by the name SOFITEL; nor can he assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, in accordance with Section 6(c)(i) of the Policy, because the disputed domain name, which incorporates the Complainant’s trademark, resolved to a page entitled “SOFITEL LUXURY HOTELS” consisting of links which redirected Internet users to the Complainants’ official websites, without any authorization, which is likely to mislead Internet users into believing that the disputed domain name is controlled by or connected to the Complainants’ business. The Complainants argue that such use of the disputed domain name cannot be considered a bona fide offering of goods or services as it “will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content [of the website] on the part of consumers” in order to take unfair advantage of the Complainant’s goodwill and reputation.

Furthermore, the Complainants argue that the Respondent cannot assert that he was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue because he is using the disputed domain name to redirect to the Complainants’ official websites.

The Complainants also submit that the disputed domain name has been registered or is being used in bad faith arguing that it is implausible that the registrant was unaware of the Complainants when he registered the disputed domain name. Bad faith can be found where a respondent “knew or should have known” of a complainant’s trademark rights, and nevertheless registered a domain name in which he had no right or legitimate interest. The Complainants assert that this is evidenced by the fact that their highly distinctive SOFITEL trademark is well-known throughout the world and the disputed domain name entirely reproduces the Complainants’ trademark SOFITEL in connection with a webpage entitled “SOFITEL LUXURY HOTELS” which redirected to the Complainants’ official websites.

On December 13, 2018, the disputed domain name was resolving to a page entitled “SOFITEL LUXURY HOTELS” consisting of links which redirected to the Complainants’ official website. Moreover, an email server is configured on the disputed domain name. On the same day the Complainants sent a cease‑and‑desist letter to the Respondent by email asserting its trademark rights and asking him to cease the use of the disputed domain name <sofitel.ae> and to transfer it to the Complainants at no cost.

In ensuing email correspondence, the Respondent responded stating that the site at <sofitel.ae> was a “working demo” of how the Complainants’ ads could look on it, and that Complainants were invited to advertise their services on said website. The Respondent denied that he had infringed the Complainants’ trademarks rights since the litigious website contained a disclaimer and that the content was published free of charge. He added that that the disputed domain name <sofitel.ae> was registered to represent the “SOFITELAE” abbreviation which is not related to the Complainants and informed the Complainants’ that the content on the litigious website has been removed. Additionally, the Respondent attempted to sell the disputed domain name to the Complainants and asked the latter to make an offer for the disputed domain name. Following this intervention, the litigious content was removed from the website on December 17, 2017 and the disputed domain name now resolves to an inaccessible page, which can be assimilated to an inactive page.

The Complainants submit that the Respondent is using the disputed domain name to intentionally attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website, in accordance with Section 6(b)(iv) of the Policy. Accordingly, by registering the disputed domain name, the Respondent has created a likelihood of confusion with the Complainants’ trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, controlled by or associated with the Complainants and thus may heighten the risk of confusion.

The Complainants submit that a further indication of the Respondent’s bad faith is the fact that an email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is intending to or has engaged in phishing or some other type of illegal activity.

Moreover, the Respondent’s immediate offer to sell the domain name despite having been summoned to transfer the disputed domain name to the Complainants free of charge through a cease-and-desist letter is a strong indication that the Respondent hoped to sell the disputed domain name to the Complainants or to a competitor of the Complainants which is a clear evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 6 of the Policy, in this administrative proceeding, the Complainant must prove that each of the following three elements are present.

i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants, which are a parent and subsidiary company within an international group, have provided convincing evidence of their rights in the SOFITEL name and service mark acquired through their ownership of the abovementioned registered trademark owned by the second named Complainant and the goodwill in the mark established by their extensive international use of the mark in their hotel business.

The disputed domain name consists of the Complainants’ SOFITEL mark and the “.ae” ccTLD. As the ccTLD may be ignored for the purposes of comparison between the Complainants’ mark and the disputed domain name at issue, this Panel finds that the disputed domain name is identical to the Complainants’ mark.

The Complainants have therefore satisfied the first element of the test in paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been authorized to use the Complainants’ SOFITEL name and mark whether as a domain name or as the address of a website; that he is not commonly known by the name; and that he is purporting to use the disputed domain name as a means to force the Complainant to pay him an advertising fee to redirect traffic from a website owned or controlled by the Respondent to the Complainants’ own website. As the disputed domain name is identical to the Complainants’ trademark this would produce the unacceptable and farcical situation whereby the Complainants would be paying to have traffic which was redirected away from their website be redirected back to their website. The Respondent could never acquire any rights or legitimate interests in the disputed domain name by such use.

It is well accepted within the jurisprudence of domain name dispute resolution that has evolved under other policies on other domains such as the Uniform Domain Name Dispute Resolution Policy (“UDRP”) for generic Top‑Level Domains (“gTLDs”), that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the burden of production shifts to the respondent to establish such rights. In the view of this Panel, it is appropriate that this approach should be applied under the Policy for the “.ae” domain also.

As the Respondent has failed to deliver a Response to the Complaint and has merely communicated with the Center denying any association with the disputed domain name, it follows that he has failed to discharge the burden of production and the Complainant is entitled to succeed in the second element of the test in paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

This Panel accepts the Complainants’ submission that registrant of the disputed domain name must have been actually aware of the Complainants, their SOFITEL name and mark, and the goodwill that they have acquired in the SOFITEL mark through their extensive use of the mark throughout the world including the UAE where they have an established chain of hotels.

It is inconceivable that anyone would choose and register the disputed domain name which is identical to the Complainants’ name and mark without authorization from the Complainants, for any purpose except to take predatory advantage of the Complainants’ rights in the goodwill and reputation of the name and mark.

The explanation proffered by the Respondent that the disputed domain name <sofitel.ae> was registered to represent the “SOFITELAE” abbreviation which is not related to the Complainants’ mark makes no sense whatsoever.

This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of the Complainants’ rights in the SOFITEL mark.

As the Policy requires the Complainants to prove that the disputed domain name was either registered or used in bad faith, it is not necessary for this Panel to consider the Respondent’s use of the disputed domain name in order to make a finding in favour of the Complainant.

The Complainants have therefore succeeded in proving the third and final element of the test in paragraph 6(a)(iii) of the Policy also and are entitled to succeed and be granted the reliefs sought in the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sofitel.ae> be transferred to the second named Complainant, SoLuxury HMC.

James Bridgeman
Panelist
Date: April 16, 2019