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ACCOR v. NA/Kimiko Nakamura [2004] GENDND 1111 (24 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ACCOR v. NA/Kimiko Nakamura

Case No. D2004-0477

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, France.

The Respondent is NA/Kimiko Nakamura, Chiba City, Japan.

2. The Domain Name and Registrar

The disputed domain name <soffitel.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2004. On June 30, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 30, 2004, Intercosmos Media Group d/b/a directNIC.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 13, 2004. The Center verified that the Complaint together with the amendment to 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 July 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed Peter G. Nitter as the sole panelist in this matter on August 17, 2004. 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

Complainant is conducting business in the field of hotels and restaurants, and has more than 4,000 hotels and restaurants around the world. The trade mark SOFITEL is Complainant’s premium hotel brand, used to designate 179 hotels in 52 countries. Complainant holds several trademark registrations for ‘sofitel’, some of which are registered in a long range of countries. Complainant has furthermore registered around 30 domain names containing its trademark SOFITEL, hereunder <sofitel.com>.

Respondent has registered and is using the contested domain name, <soffitel.com>.

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights. Complainant is well known worldwide under its trademarks, hereunder the SOFITEL trademark.

Respondent has reproduced the trademark SOFITEL, by simply doubling the letter ‘f’ which creates an evident risk of confusion between the domain name at issue and Complainant’s trademark. According to previous panel decisions, it has been established that the deletion or addition of one letter is to be regarded as an insignificant change in relation to the provisions of the Policy Paragraph 4(a)(i), see Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018.

Respondent has no rights or legitimate interests in respect of the contested domain name.

Respondent is not affiliated with Complainant in any way, nor has it been authorized in any way to register and use Complainant’s trademark. Respondent has no prior rights or legitimate interests in the domain name at issue, and Respondent’s registration of this has been preceded by Complainant’s trademark and domain name registrations. Neither is Respondent known under the name ‘Sofitel’ or any similar term, nor is he making any legitimate non-commercial or fair use of the contested domain name, as he is using it for a website offering promotional links.

The domain name at issue was registered and is being used in bad faith.

Respondent has disclosed false information about its identity, and such conduct is according to previous panel decision an indication of bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It also seems obvious that Respondent knew or must have known about the Sofitel hotel chain at the time he registered the domain name in question. Complainant operates two Sofitel hotels in Japan, Respondent’s country of residence. Respondent’s conduct furthermore shows that he intentionally has attempted to attract, for commercial gain, Internet users to his web site corresponding to the domain name in question, by creating a likelihood of confusion with Complainant’s marks, and such use of the domain name may disrupt the business of Complainant. The above circumstances are, according to previous panel decisions, evidence of bad faith, see National Association of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, WIPO Cases Nos. D2001-1387 and ACCOR v. Jose Manuel Fernandez Garcia, D2002-0988.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue is not identical to any of Complainant’s trade- or service marks. The question is therefore whether there is confusing similarity.

In accordance with established precedent under the UDRP, the Panel considers that the suffix “.com” does not influence on the consideration of similarity.

The contested domain name is thus almost phonetically and visually identical to the trade mark of the Complainant, as the only difference between the two consists of the doubling of the letter ‘f’.

Such domain names that are identical to a Complainant’s trade mark or service mark except for the addition or the removal of a double letter, have been found confusingly similar under several previous UDRP decisions, see as examples United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 regarding the domain name <dillbert.com>, and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 regarding the domain name <guiness.com>.

The Panel therefore agrees with Complainant’s assertions that Respondent has registered a domain name that mimics Complainant’s domain name, and that it is an obvious and minor alteration of Complainant’s well known SOFITEL mark and domain names, which leads the domain name at issue to be confusingly similar with Complainant’s trademarks.

B. Rights or Legitimate Interests

The Panel has considered the allegation made by Complainant that Respondent lacks any rights or legitimate interests in the contested domain name. Respondent is in default and has therefore not contested these allegations.

It is generally difficult for the Complainant to prove the negative that Respondent does not have any rights or legitimate interests in the domain name at issue. For Respondent, on the other hand, it would be fairly simple to demonstrate that he has any such rights or legitimate interests pursuant to Paragraph 4(c) of the Policy. In the event of a Respondent’s default, previous decisions under the UDRP have therefore found it sufficient for Complainant to make a prima facie showing of its assertion.

Complainant has documented that it is running a major international business in the hotels and restaurant industry, and that it is well known in large parts of the world under its trade- and service marks, hereunder SOFITEL. On the Internet web page corresponding to the domain name at issue, there are links to both Sofitel hotels, and other hotel brands that are not owned by Complainant. It is unlikely that Complainant would grant Respondent a right to use the ‘Sofitel’ brand in connection to a service that contains information about competitors of Complainant. It is furthermore unlikely that Respondent would have any legitimate interest in such use of a name confusingly similar to Complainant’s trademark.

The Panel thus finds that these circumstances is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Given the high degree of recognition of Complainant’s trademark SOFITEL, and that Complainant runs two hotels under this brand in Respondent’s country of residence, given the similarity between Complainant’s trade mark and domain name ‘Sofitel’ and the domain name at issue, and given the fact that Respondent is offering links to hotels, hereunder Sofitel hotels, on his website, it is in the opinion of the Panel evidenced that Respondent has been aware of Complainant’s trade mark at the time of the registration of the contested domain name.

On this background it is furthermore evident that Respondent has made an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s marks as outlined in the Paragraph 4(b)(iv) 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 name <soffitel.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: August 24, 2004