Accor v. Gary Weber a/k/a Gary
Claim Number: FA0707001039728
PARTIES
Complainant is Accor,
(“Complainant”) represented by Nathalie
Dreyfus, of Cabinet Dreyfus et
associes, 25 rue Louis Le Grand, 75002, Paris, France. Respondent is Gary Weber a/k/a Gary,
(“Respondent”), xxx Kandagar, Kandahar 12345, Afghanistan.
The domain name at issue is <sofitel-hotel.us>,
registered with Estdomains, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on July 17, 2007; the Forum received a hard copy
of the Complaint on July 25, 2007.
On August 1, 2007, Estdomains, Inc. confirmed by e-mail to the Forum that
the <sofitel-hotel.us> domain name is registered with Estdomains, Inc. and that Respondent is
the current registrant of the name.
Estdomains, Inc. has verified that Respondent is bound by the
Estdomains, Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 10, 2007, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 30, 2007 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On September 6, 2007, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Trademark/Service Mark Information: usTLD Rule 3(c) (viii).
- 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 et 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 et 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, United States trademark n°78107333 filed on February 7, 2002 and covering services in classes 35 and 43.
- HOTEL SOFITEL EXCLUSIVE CARD, United States trademark n°75597827 filed on November 30, 1998 and covering services in class 42.
FACTUAL AND LEGAL
GROUNDS
This Complaint is based on the
following factual and legal grounds: usTLD Rule 3(c) (ix).
The domain names are identical or confusingly similar to a trademark or service mark for which the Complainant has rights
The domain name <sofitel-hotel.us> reproduces entirely the Complainant’s trademarks SOFITEL.
It is well established that the mere adjunction of the usTLD “.us” is not a distinguishing feature and does not change the likelihood of confusion merely because it is necessary for the registration of the domain name itself. The extension “.us” is not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain name.
Additionally, the mere addition of the term “hotel” leads people to think that these domain names are specific to the hotels of Sofitel and are insufficient to avoid any confusion. The term ‘hotel’ actually increases the confusion because the term falls under the services provided by the Complainant. The addition of, for instance, the generic word “hotel” to a trademark only suggests that the services and goods marketed are those of the trademark holder. As a result, it is obvious that the disputed domain name <sofitel-hotel.us> is strictly identical or at least confusingly similar 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.
The Respondent has no rights
or legitimate interests in respect of the domain name;
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 said mark.
Furthermore, the Respondent has no
prior rights or legitimate interest in the domain name. The Respondent never
used the term “SOFITEL” in any way before or after the Complainant started
their business.
The Respondent is not known under
the name “SOFITEL” or any similar term.
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 names redirect internet browsers to a pornographic webpage titled ‘VIDEO PORTAL’.
Moreover, the strict reproduction of the well-known trademark “SOFITEL” constitutes an obvious intent to divert Internet browsers.
In fact, since the domain name in dispute is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was attempting to conduct a legitimate activity.
Furthermore,
Respondent did not answer to the Complainant’s email on July 12, 2007, and
cease and desist letter on July 12, 2007 and did not demonstrate any right or
legitimate interest regarding the disputed domain name (see Annex 4).
The domain name was
registered and is being used in bad faith.
Registration
in bad faith.
The name “SOFITEL” does not have any meaning in English. The Respondent had no reason to choose these domain names other than 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 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 names. The
Respondent had the Complainant in mind while registering the domain names in
dispute because of the addition of ‘hotel’ to the domain names. The Respondent
does not dispute having knowledge of the Complainant’s trademarks.
Use in bad faith.
The Respondent is trading on the goodwill existing in Complainant’s famous service mark to intentionally attract Internet users to Respondent’s website for purposes of commercial gain. This constitutes evidence of bad faith use and registration. Thus, the Respondent registered and uses the disputed domain names and is perfectly aware that it infringes upon the Complainant’s rights.
The
fact that both disputed domain names ‘click-through’ to ‘VIDEO PORTAL’ a
pornographic web page acts as evidence of use in bad faith because the
Respondent is attempting to use the popularity of the Complainant in their
favor.
Moreover, the letter sent by registered mail and email to the
Respondent’s address mentioned on the Whois database of the disputed domain
name was never responded to. In addition, the address provided by Respondent is
false. Even though there is no express evidence proving that invalidity of this
address, a reasonable person can assume that the address 12345 Kandagar in
Afghanistan is implicitly invalid. Additionally, the phone number provided by
the respondent is 123456, which is obviously an invalid number.
Finally, the fact
that the disputed domain names divert web browsers to a pornographic website is
evidence of bad faith. Allowing the continued use of the domain names by the
Respondent tarnishes the image of the Complainant and has the potential to
cause serious economic damage. Additionally, the reputation of ‘SOFITEL’ as a
classy hotel chain suffers when the hotel chain is associated with the sale and
distribution of pornographic material. Therefore, the actions of the Respondent
illustrate that he knowingly uses the ‘SOFITEL’ trademarks to increase traffic
on ‘VIDEO PORTAL’ a pornographic website that is in no way associated with the
Complainant.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant Accor holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the SOFITEL mark (Reg. No. 3,159,101 issued October 17, 2006). Complainant also holds several international
trademark registrations for the SOFITEL pursuant
to the Madrid Protocol (e.g.,
Reg. No. 406,255 issued April 18, 1974 and Reg. No. 614,992 October 29,
1993). Complainant is using the SOFITEL
mark in connection with its international chain of hotel goods and services.
Respondent registered the <sofitel-hotel.us>
domain name on June 4, 2007. Respondent is using the disputed domain name
to redirect Internet users to Respondent’s website entitled “Video Portal,”
which displays adult-oriented video content.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the
domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the SOFITEL mark through registration of the mark with the USPTO. Complainant also holds several international registrations pursuant to the Madrid Protocol. The Panel finds Complainant has established rights in the SOFITEL mark pursuant to Policy ¶4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vapiano AG v. Sex-Escort, FA 829126 (Nat. Arb. Forum Dec. 13, 2006) (“Complainant has registered the VAPIANO mark…with the Madrid Protocol for the International Registration of Marks. These trademark registrations sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
Respondent’s <sofitel-hotel.us> domain name is confusingly similar to Complainant’s SOFITEL mark as it uses the mark in its entirety and simply attaches the descriptive word “hotel” with a hyphen to the mark. Complainant uses the SOFITEL mark primarily in connection with its international chain of hotels, including those in the United States. Therefore, the Panel finds the addition of the descriptive word hotel and the use of a hyphen does not sufficiently alter the mark to avoid a finding of confusing similarity. The Panel finds Respondent’s <sofitel-hotel.us> domain name is confusingly similar to Complainant’s SOFITEL mark under Policy ¶4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a [UDRP] Policy ¶4(a)(i) confusingly similar analysis.”).
Additionally, the
addition of the country code “.us” is not a distinguishing factor. As panels have previously held, this Panel
finds the addition of a country code is not sufficient to negate the
confusingly similar aspect of the disputed domain name to the mark under Policy
¶4(a)(i). See Mattel, Inc. v. Unknown,
FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the
trademark “Barbie”, as it uses the trademark in its entirety. The only
difference is the addition of the country code “us” which for this purpose is
insufficient to distinguish the domain name from the trademark.”); see also
Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding
that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to the complainant’s TROPAR mark).
The Panel finds
Policy ¶4(a)(i) satisfied.
Rights or Legitimate Interests
Complainant asserts Respondent does not have rights or legitimate interests in the <sofitel-hotel.us> domain name. In the instant proceeding, Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show he has rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under [UDRP] Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to [UDRP] Policy ¶4(a)(ii).”).
The Panel may assume Respondent has no rights or legitimate interests here because Respondent failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will review all available evidence before determining whether the Respondent has rights or legitimate interests in the mark under Policy ¶4(c).
While Complainant has established
rights in the SOFITEL mark, Respondent has failed to offer any evidence which
demonstrates Respondent holds a service mark or trademark in the <sofitel-hotel.us>
domain name. Therefore, the Panel finds Respondent has
failed to establish rights in the mark under Policy ¶4(c)(i). See Meow Media Inc. v. Basil,
FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no
evidence that the respondent was the owner or beneficiary of a mark that is
identical to the <persiankitty.com> domain name); see also Pepsico,
Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that
because the respondent did not own any trademarks or service marks reflecting the
<pepsicola.us> domain name, it had no rights or legitimate interests
pursuant to Policy ¶4(c)(i)).
Respondent is using the <sofitel-hotel.us>
domain name to redirect Internet users
to Respondent’s website, which displays adult-oriented video content. Such use by Respondent to display
adult-oriented material is not a use in connection with a bona fide
offering of goods or services under Policy ¶4(c)(ii), or a legitimate
noncommercial or fair use under Policy ¶4(c)(iv). See Target Brands, Inc. v. Bealo Group
S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the
<targetstore.net> domain name
to redirect Internet users to an adult-oriented website did not equate to a bona
fide offering of goods or services under UDRP ¶4(c)(i), or a legitimate
noncommercial or fair use of a domain name under UDRP ¶4(c)(iii)); see also Dipaolo v. Genero, FA
203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented content]
is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name pursuant to [UDRP] Policy
¶¶4(c)(i) and (iii).”).
Finally,
Respondent has offered no evidence and no evidence is present in the record to
indicate Respondent is commonly known by the <sofitel-hotel.us>
domain name. Respondent’s WHOIS information identifies
Respondent as “Gary Weber a/k/a Gary.”
Therefore, the Panel finds Respondent has failed to establish rights or
legitimate interests in the disputed domain name under Policy ¶4(c)(iii). See Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel
finds Policy ¶4(a)(ii) satisfied.
Registration and Use in Bad Faith
Respondent has registered and is using the <sofitel-hotel.us>
domain name, which is confusingly
similar to Complainant’s SOFITEL mark, to redirect Internet users to
Respondent’s website entitled “Video Portal,” which displays adult-oriented
video content. The Panel finds Internet
users seeking Complainant’s hotel goods and services under the SOFITEL mark may
become confused as to Complainant’s affiliation with Respondent’s website. Presumably, Respondent is profiting from this
confusion through click-through fees.
Therefore, the Panel finds Respondent’s use of the <sofitel-hotel.us>
domain name constitutes bad faith
registration and use pursuant to Policy ¶4(b)(iv). See Qwest
Comm’ns Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to
commercially benefit from the misleading <qwestwirless.com> domain name
by linking the domain name to adult oriented websites, gambling websites, and
websites in competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith pursuant to [UDRP] Policy ¶4(b)(iv).”); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to [UDRP] Policy ¶4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Finally, the Panel holds Respondent’s use of the <sofitel-hotel.us> domain name to redirect Internet users to an adult-oriented website is in and of itself evidence of bad faith registration and use under Policy ¶4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name).
The Panel finds
Policy ¶4(a)(iii) satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sofitel-hotel.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: September 17, 2007
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