ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR, Société Anonyme à Directoire et

Conseil de surveillance v. Tigertail Partners

Case No. D2002-0625

1. The Parties

The Complainant in this administrative proceeding is ACCOR, Société

Anonyme à Directoire et Conseil de surveillance ("ACCOR"),

2 rue de la Mare Neuve, 91000 Évry, France. The Complainant is represented

in this proceeding by Nathalie Dreyfus of Cabinet Wagret, Paris, France.

The Respondent is Tigertail Partners, William Samoska, 1888 Century Park East,

Suite 1900, Los Angeles, CA 90067, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <hotelsofitel.net> (the "Domain Name"). The

Registrar is Register.Com, Inc. 575 Eighth Avenue, 11th Floor, New York, NY

10018, United States of America.

3. Procedural History

The Complainant filed a Complaint by e-mail with the World Intellectual Property

Organization Arbitration and Mediation Center (the "Center") on July

5, 2002. On July 10, 2002, the Center received a hard copy of the Complaint,

with supporting evidence.

On July 8, 2002, a Request for Registrar Verification was transmitted to the

Registrar, which confirmed, on July 23, 2002, that it had received a copy of

the Complaint, that the Domain Name was registered with it, and that the Respondent

was the current registrant of the Domain Name. The Registrar transmitted to

the Center the full whois details related to the Domain Name and confirmed that

the ICANN Uniform Dispute Resolution Policy (the "Policy") applies

to the Domain Name.

On July 25, 2002, the Center determined that the complaint satisfied the formal

requirements of 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"). On the

same day, the Center notified the Respondent of the commencement of this proceeding

and set August 4, 2002 as the date for the submission of a Response.

The Center did not receive a Response. On August 19, 2002, the Center sent

to the Parties, by email, a Notification of Respondent Default.

The Complainant elected to have the complaint resolved by a sole panelist.

On August 19, 2002, the Center invited the undersigned to act as Sole Panelist.

On August 22, 2002, the undersigned provided a Statement of Acceptance

and Declaration of Impartiality and Independence. On August 23, 2002, the Center

appointed the undersigned, notified the Parties by email of this appointment

and set September 6, 2002, as the Projected Decision

Date.

The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules. It has also independently determined

and agrees with the assessment of the Center that the Complaint meets the formal

requirements of the Policy, the Rules and the Supplemental Rules.

The language of this administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

Complainant is the third largest hotel group in the world. SOFITEL is its premium

hotel brand. It operates 150 hotels in 50 countries under that name, including

several in the United States. SOFITEL is one of the best known trademarks for

hotels and restaurants. Complainant is the owner of over 70 registered trademarks

throughout the world which include the word SOFITEL or figurative trademarks

used in connection with the verbal trademarks. These include:

- SOFITEL, French trademark, registered since 1983 for all goods and services

(classes from 1 to 42), and in particular communications (class 38) and hotels

and restaurants (class 42);

- WORLD AND WORDS BY PULLMAN SOFITEL, international mark, registered since

1992. The registration was made for several countries, including Germany, Benelux,

Italy, Vietnam, and Spain, with respect to class 16 (documents relative

to the hotels-restaurants reservation and to the activity of tourism in general),

class 35 (advertising) and class 42 (hotels, restaurants, bars).

The Domain Name was registered in December, 1999. It does not resolve to any

active site. Users who enter the URL are directed to a page operated by the

Registrar. Users are told that the Domain Name is registered with the Registrar

and are invited, inter alia, to check for the availability of the Domain

Name. If they do so, they are brought to a page that indicates that the Domain

Name is taken. From that page, if they click on the appropriate link, they are

invited to make an anonymous offer to purchase the Domain Name [1].

There is no evidence that the Domain Name was ever used by Respondent.

Complainant tried to contact Respondent by fax and email and received no response.

Respondent did, however, sign an acknowledgement of receipt of a registered

letter from Complainant on April 3, 2002 [Complainant’s Exhibit 11] but failed

to reply. The last attempts to fax a letter to Respondent did not go through.

5. Parties' Contentions

A. Complainant

Complainant relies on the following arguments to ask that the Domain Name be

transferred to it.

The Domain Name is confusingly similar to the Complainant’s SOFITEL marks.

Having regard to the extensive reputation throughout the world of the trademark

SOFITEL, consumers will obviously be led to think that the titular of the Domain

Name forms a partnership with the Complainant.

The Domain Name is identical to the Complainant’s SOFITEL trademark but for

the additional word : "hotel." The word "hotel" is a generic

term; furthermore, it evokes precisely the services offered by the Complainant

and associated with the mark.

The Respondent has no legitimate interest or rights in the Domain Name. The

Complainant’s rights in the trademark go back as far as 1983. Complainant has

not authorized in any way the Respondent to use any of its trademarks. Before

the Domain Name was registered, the Respondent did not carry on any business

and was not commonly known by a domain name or any other name consisting of

SOFITEL. The Respondent is not making a legitimate non-commercial or fair use

of the Domain Name, since no web site is attached. In fact, the Domain Name

is not being used at all.

The Respondent registered the Domain Name and is using it in bad faith. The

Complainant has an international presence through its site <sofitel.com>

which offers information about its establishments throughout the world, and

allows customers to make reservations. The Respondent had to know that the Complainant

had rights on the invented word "sofitel." Furthermore, the use or

even existence of the Domain Name is likely to create confusion.

B. Respondent

The Respondent has not submitted a Response nor any other comments.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this

proceeding and obtain the transfer of the Domain Name, the Complainant must

prove that each of the three following elements are satisfied :

1. The Domain Name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the Domain

Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see

below, section 6.3).

Paragraph 4(a) in fine of the Policy clearly states that the burden of proving

that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the 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.

Moreover, 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 shall

draw such inferences therefrom, as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which

Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a

trademark or service mark; and (2) is the Domain Name identical or confusingly

similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used

the mark SOFITEL since at least 1983 and that the Complainant succeeded in obtaining

several registrations of the mark. The Panel finds that the Complainant has

rights in the mark SOFITEL.

As to the second question, the Panel finds that the Domain Name is confusingly

similar to the trademark SOFITEL. As a rule, when a domain name wholly incorporates

a complainant’s mark and only adds a generic word, that is sufficient to establish

confusing similarity for purposes of the Policy. Confusion is only heightened

when the generic word added by Respondent is descriptive of the Complainant’s

goods or services marketed in relation to the trademark. (see, e.g.,

Volvo Trademark Holding AB v. Lost in Space, SA, WIPO

Case No. D2002-0445 (August 1, 2002); Arthur Guinness Son & Co. (Dublin)

Ltd v. Steel Vertigogo, WIPO Case No.

D2001-0020 (March 22, 2001); and Arthur Guinness Son &

Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO

Case No. D2001-0026 (March 23, 2001)). In this instance, the addition of

the word "hotel" tends to compound the confusion. (See ACCOR, Société

Anonyme à Directoire et Conseil de Surveillance v. SEOCHO, WIPO

Case No. D2002-0517 (August 12, 2002)).

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name

?

The Complainants submits that the Respondent has no rights or legitimate interests

in the Domain Name based on Complainant's prior use of the SOFITEL mark. The

Respondent, whom did not file a Response, did not dispute this contention nor

provide information as to its interests to use the Domain Name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights

or legitimate interests in the Domain Name, among other circumstances, by showing

any of the following elements :

"(i) before any notice to you [Respondent] of the dispute, your use of,

or demonstrable preparations to use, the Domain Name or a name corresponding

to the Domain Name in connection with a bona fide offering of goods or services;

or

(ii) you [Respondent] (as an individual, business, or other organization) have

been commonly known by the Domain Name, even if you have acquired no trade mark

or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of

the Domain Name, without intent for commercial gain to misleadingly divert consumers

or to tarnish the trade mark or service mark at issue."

The Respondent has not used the Domain Name. The Respondent has not offered

goods or services under the name SOFITEL. There are no elements showing that

the Respondent is or was commonly known by the Domain Name. There is no evidence

that the Respondent is making a legitimate noncommercial or fair use of the

Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate

interests in the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith

?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation,

shall be evidence of the registration and use of a domain name in bad faith,

namely:

(i) circumstances indicating that Respondent has registered or acquired the

domain name primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to the complainant who is the owner of the trademark

or service mark or to a competitor of that complainant, for valuable consideration

in excess of the Respondent's documented out-of-pocket costs directly related

to the domain name; or

(ii) 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 Respondent has engaged in a pattern of such conduct;

or

(iii) Respondent has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract,

for commercial gain, Internet users to 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 Respondent's web

site or location or of a product.

There is no direct evidence of any of the situations enumerated above. However,

the introductory part of the paragraph clearly indicates that the four examples

offered are not limitative.

It is relatively easy to conclude that the Domain Name was registered in bad

faith, if only because the Domain Name is composed of the Complainant’s mark

to which is added the generic term "hotel," which evokes precisely

the services offered by the Complainant and associated with the mark. It is

reasonable to conclude that only someone who was familiar with the mark and

what it stands for would have gone through the trouble of registering the Domain

Name.

It is more difficult to conclude that the Domain Name is being used in bad

faith. Typing the Domain Name simply leads to a page (operated, interestingly

enough, by the Registrar of the Domain Name) where one may make an anonymous

offer to purchase the Domain Name.

Early on, panels have found that under certain circumstances, not using a domain

name may nevertheless constitute "using" it in bad faith under the

Policy. The seminal ruling on this issue probably is Telstra Corporation

Limited vs. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000). Other relevant precedents include

Jupiters Limited v. Aaron Hall, WIPO

Case No. D2000-0574 (August 3, 2000); and DCI S.A. v. Link Commercial

Corporation, WIPO Case No. D2000-1232

(December 7, 2000). See also Mondich v. Brown, WIPO

Case No. D2000-0004 (February 16, 2000); Toyota Motor Corporation v.

Salvador Cobian, WIPO Case No.

DMX2001-0006 (December 20, 2001) and Fortuneo v. Johann Guinebert,

WIPO Case No. D2001-0781 (September 5,

2001)).

That being said, where a panel is unable to conclude, based on direct evidence

or reasonable inferences, that the circumstances set out in paragraph 4(b) of

the Policy do exist, any decision that the passive holding of a domain name

constitutes bad faith use ought to require a particularly convincing set of

circumstances [2].

In this instance, there are three circumstances which, according to certain

previous panel decisions, taken individually may or may not be sufficient to

conclude that the Domain Name is being used in bad faith but which, taken together

and in the absence of any response or comment on the part of the Respondent

[3], do lead to that conclusion.

First, there is a difference between a completely inactive domain name (which

resolves to an error page) and a name that is registered and resolves not to

an active site, but to one [4] where offers

to purchase the Domain Name can be made. This is liable to have a negative effect

on Complainant's customers and could depreciate its trademark, image and goodwill,

even though there is no evidence that the Respondent would be willing to sell

the Domain Name if such an offer was made [5].

Here, as in the Telstra case, the period of inactivity was significant.

It lasted almost three years with no evidence of any intention to use the Domain

Name.

Then, there is the fact that the Respondent did not reply to the Complainant’s

attempts to contact the Respondent on several occasions before initiating this

proceeding. (See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO

Case No. D2000-1273 (November 13, 2000); Advanced Micro Devices, Inc.

v. [No Name], WIPO Case No. D2000-0515

(January 24, 2001); Telstra Corporation, Ltd. v. Nuclear Marshmallows,

already cited; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO

Case No. D2000-0330 (June 7, 2000); eBay Inc. v. Sunho Hong, WIPO

Case No. D2000-1633 (January 18, 2001) and Ellerman Investments Limited

and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO

Case No. D2001-1461. The facts of the present case are not entirely dissimilar

to those of the eBay Inc. v. Sunho Hong case.

These decisions stand for the proposition that in respect of famous marks,

which have a higher level of protection in international intellectual property

agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the

person who registers a confusingly similar domain name should be willing to

show an intention to express himself or herself by responding to communications

and indicating at least an intention to make good faith use of the domain name.

Here, the first faxes and email messages sent to Respondent remained unanswered,

and recent communications were returned as undeliverable. From this perspective,

maintaining updated contact information could be considered part of the "use"

of a domain name. It is also an obligation under the registration agreement

[Complainant’s Exhibit 2] [6].

Finally, it is inconceivable that Respondent chose to include the invented

word SOFITEL in the Domain Name by accident. Any doubt in that respect is dispelled

by the addition by Respondent of the word "hotel" in the Domain Name,

which merely describes the Complainant's principal services. In fact, it is

fairly difficult to conceive of any plausible actual or contemplated active

use of the domain name by the Respondent that would not be illegitimate, such

as by being a passing off, an infringement of consumer protection legislation,

or an infringement of the Complainant's rights under trademark law. Admittedly,

at least under US law (which applies to Respondent) such fair uses of the trademark

are not impossible: see Cellular One Group v. Paul Brien, WIPO

Case No. D2000-0028 (March 10, 2000); and Banco de Chile S.A. v. Eric

S. Bord, Esq. WIPO Case No. D2001-0695

(August 14, 2001). In this case, however, no such use is being made and no intention

has been expressed to make such use.

Taken together, these three elements become compelling enough for a finding

of bad faith use. SOFITEL is a famous mark. The Respondent knew of its existence

and of the nature of the goods or services associated with it. The Respondent

failed to update contact information with the Registrar and to respond to several

communications from Complainant. The Respondent has shown no intention of putting

the Domain Name to any use, legitimate or otherwise, almost three years after

registering it. This is sufficient to warrant a finding that the Domain Name

is being used in bad faith even though it is inactive.

It is worth noting that there are a number of cases that have found that Respondent

failure to "contribute" to the Internet by "merely attempting

to exploit a general rule of registration" was an indication of bad faith.

(See, e.g., SAir Group v. Reinhart, WIPO

Case No. D2000-0482 (July 6, 2000); Educational Testing Service v. TOEFL,

WIPO Case No. D2000-0044 (March 16, 2000).

In light of the particular set of circumstances of this case, it is unnecessary

to decide whether the Complainant would succeed only on the basis of such precedents.

In light of the above, the Panel finds that the Domain Name was registered

and is being used in bad faith.

7. Decision

On the basis of the elements set out above, the Panel finds that :

1. The domain name <hotelsofitel.net> is confusingly similar to the trademark

SOFITEL, in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect

of the Domain Name;

3. The Domain Name was registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15

of the Rules, the Panel orders that the Domain Name <hotelsofitel.net>

be transferred to the Complainant.

Daniel Gervais

Sole Panelist

Dated: August 29, 2002

Footnotes:

1. Panel visits of the web site to which

the Domain Name resolves was done in several WIPO cases. See e.g., Lusomundo

B Sociedade Gestora De Parcipaçoes Sociais, S.A. And Lusomundo Audiovisuais,

S.A. V. Inmosoria And Andrés Ceballos Moscoso, WIPO

Case No. D2000-0523 (August 2, 2000); and Corinthians Licenciamentos

LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,

WIPO Case No. D2000-0461.

2. In at least one case, a panel decided

that the simple fact that a site was inactive was insufficient in itself to

be an indication of bad faith under the Policy. See Consorzio del Prosciutto

di Parma v. Domain Name Clearing Company, LLC, WIPO

Case No. D2000-0629 (September 18, 2000).

3. Under the Policy, the panel may draw adverse

inferences from the absence of a reply by Respondent See Fortuneo v. Johann

Guinebert, already cited; SSL International v. Mark Freeman, WIPO

Case No. D2000-1080 (November 9, 2001) and Altavista Company v. Grandtotal

Finances Ltd. et al., WIPO Case No. D2000-0848

(October 17, 2000).

4. Operated by the Registrar.

5. Paragraph 4(b)(i) could only apply after

a positive response to such an offer was received.

6. Respondent had a duty to keep current

information such as email address and fax number per the Registration Agreement

(paragraph 8(a)). In addition, failure to willfully update such information

constitutes a material breach of such Agreement (paragraph 8(c)).

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