WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA, SoLuxury HMC v. bai he
Case No. D2019-2447
1. The Parties
The Complainant is Accor SA, SoLuxury HMC, France, represented by Dreyfus & associés, France.
The Respondent is bai he, China.
2. The Domain Names and Registrar
The disputed domain names <accorhotel-xingji.com>, <pullmanzx.com>, <pullmanzy.com>, <sofitel-bj.com>, <sofitelhq.com>, <sofitelsh.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing relevant contact details.
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 of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was November 4, 2019. The Respondent did not submit a response. Accordingly, the Center notified of the Respondent’s default on November 6, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on November 20, 2019. The Panel finds that it was properly constituted. The Panel 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 Complainant, Accor, is a French multinational hotel group, which specializes in economical and mid-scale hotels, and is also a provider of upscale and luxury hospitality services. Accor operates 4,954 hotels worldwide, including the notable hotel chains Sofitel, Pullman, Raffles, Fairmont, Novotel, Mercure and IBIS. They include six hotels in the Hong Kong SAR of China and 355 hotels in Mainland China.
Sofitel and Pullman are luxury hotel brands with over 120 and 130 branded hotels, respectively, spread over more than 40 countries and five continents.
The Complainant, SoLuxury HMC, is Accor’s subsidiary. (Hereafter Accor and SoLuxury will be referred to collectively as “the Complainants”.) The Complainants own numerous trademark registrations in the name of Accor and SoLuxury HMC. Only one of each relevant mark is listed here for the sake of brevity:
- International trademark registration ACCOR, No. 742032, protected, inter alia, in China, Germany, Egypt, Italy, Russian Federation, Viet Nam, Turkey, the United Kingdom, Algeria, registered on August 25, 2000, duly renewed, and covering services in class 38;
- International trademark registration ACCORHOTELS, No. 1103847, protected in Ukraine, Australia, China, Russian Federation, Singapore, and the United States, registered on December 12, 2011, and covering services in class 35, 39 and 43;
- International trademark registration SOFITEL, No. 863332 protected, inter alia, in Japan, China, Singapore, and Viet Nam, and registered on August 26, 2005, duly renewed, and covering services in classes 35, 39 and 43;
- International trademark registration PULLMAN No. 1197984 protected, inter alia, in the Philippines, India, the European Union, and Turkey, registered on November 28, 2013, and covering services in class 43;
In addition, the Complainants and their affiliates operate domain names incorporating their trademarks including <accor.com>, <accorhotels.com>, <sofitel.com> and <pullmanhotels.com>.
There are six disputed domain names: <accorhotel-xingji.com>, <pullmanzx.com>, <pullmanzy.com>, <sofitel-bj.com>, <sofitelhq.com> and <sofitelsh.com>. All of the disputed domain names were registered on July 9, 2019.
On July 11, 2019, the Complainants sent the Respondent a cease and desist letter regarding the disputed domain name <accorhotel-xingji.com>, which was returned with the message “incomplete address”. Following this, the Complainants detected the remaining disputed domain names which are the subject of this action.
5. Parties’ Contentions
The Complainants contend that the disputed domain names are identical or confusingly similar to the marks ACCOR, ACCORHOTELS, PULLMAN and SOFITEL in which they have rights. The Complainants own numerous trademark registrations for these marks and operate domain names reflecting the marks. The disputed domain names reproduce the Complainants’ trademarks, which previous panels have considered to be well-known.
The disputed domain name <accorhotel-xingji.com> reproduces the mark ACCOR with the generic term “hotel”, and the term “xingji”, which is the romanization of a Chinese word meaning “highly rated”, and intersected by a hyphen. It also incorporates the mark ACCORHOTELS, omitting the letter “s”, which does not remove the likelihood of confusion.
The disputed domain names <pullmanzy.com> and <pullmanzx.com> entirely reproduce the Complainants’ trademark PULLMAN with the association of the letters “zy” and “zx”, respectively. The disputed domain names <sofitelsh.com>, <sofitelhq.com> and <sofitel-bj.com> entirely reproduce the Complainants’ trademark SOFITEL with the association of the letters “sh”, “hq”, and “bj”, respectively. These minor variations, whether with or without hyphenation, are insufficient to remove the likelihood of confusion.
The Complainants further submit that the Respondent has no rights or legitimate interests in the disputed domain names. It is neither affiliated with the Complainants in any way, nor has it been authorized by the Complainants to use and register the trademarks, or to seek registration of any domain names incorporating said trademarks. The Respondent is not commonly known by the disputed domain names. It is also not using, nor has made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate non-commercial fair use.
Instead, the disputed domain names resolve to fraudulent websites imitating those of the Complainants, but with language in Chinese. Specifically, the websites contain information on the Complainants’ hotels while offering services related to hotels, including an online booking system. The websites also display pictures of the Complainants’ hotels. As such, Internet users are likely to mistakenly conclude that they are visiting official websites of the Complainants.
Finally, the Complainants submit that the disputed domain names were registered and are being used in bad faith. Given the Complainants’ renown throughout the world and the fact that the disputed domain names reproduce and incorporate four of the Complainants’ trademarks, it is implausible that Respondent was unaware of Complainants’ trademarks and activities when it registered the disputed domain names. Indeed, quick online searches would have revealed the existence of the Complainants and their trademarks. Therefore, the Complainants submit that the Respondent chose the disputed domain names for no other reason than to deliberately cause confusion among Internet users as to its source and in order to take unfair advantage of the Complainants’ goodwill and reputation, thereby clearly constituting bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Consolidation of the Complainants
The Complaint was filed in the name of two related entities, Accor SA and its subsidiary SoLuxury HMC. The disputed domain names are all filed in the name of a single respondent and contain trademarks belonging to both Accor SA and SoLuxury HMC. In accordance with section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel believes the Complainants have a common grievance against the Respondent and that the Respondent’s conduct has affected them in a similar fashion. Therefore, it would be equitable and procedurally efficient to permit the consolidation.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainants have shown that they have multiple trademark registrations for the marks ACCOR, ACCORHOTELS, PULLMAN and SOFITEL.
The test for whether a domain name is identical or confusingly similar to a trademark is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g., F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <accorhotel-xingji.com> entirely contains the Complainants’ trademark ACCOR, and essentially contains the Complainants’ trademark ACCORHOTELS with only the omission of the letter “s”. The addition of “xingji” to the Complainants’ marks at the end of the disputed domain name does not prevent confusing similarity.
Similarly, the disputed domain names <pullmanzx.com>, <pullmanzy.com> entirely incorporate the Complainants’ mark PULLMAN, and the disputed domain names <sofitel-bj.com>, <sofitelhq.com> and <sofitelsh.com> fully contain the Complainants’ mark SOFITEL. The addition of the letters “zy”, “bj”, “hq” and “sh” are insignificant to detract from the prominent element of each disputed domain name which is one of the Complainants’ marks. The two letter additions are in fact likely acronyms for descriptive terms such as locations e.g. Beijing (“bj”), Shanghai (“sh”), etc. As such, these descriptive elements cannot detract from the confusing similarity between the disputed domain names and the Complainants’ marks, which feature as the dominant component of each of the disputed domain names.
Therefore, the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).
The Panel accepts that the Respondent has not been authorized or licensed to use the disputed domain names, nor is there anything to suggest the Respondent is commonly known by the disputed domain names. There is also no evidence of a bona fide offering of goods or services, or legitimate use without intent for commercial gain, within the meaning of paragraph 4(c) of the Policy. On the contrary, according to the Complaint, the disputed domain names previously resolved to Chinese-language websites containing information about the Complainants’ hotels and offering services related to hotels, including an online booking system. Screenshots captured around the time the Complaint was lodged with the Center, show that the disputed domain names all resolved to websites with a list of “related links” featuring a list of hotels and locations, as well as advertisements for buying and developing domain names. At the time of writing this Complaint, the disputed domain names resolve to similar websites containing advertisements for buying and developing domain names or they do not resolve to any active websites. Therefore, it is clear that the disputed domain names are not being used for any consistent or legitimate purpose that does not ride on the Complainants’ reputation.
As the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). The Respondent failed to submit a response and given the clear targeting of the Complainants’ hotel business, the Panel believes there are no scenarios that could confer rights or legitimate interests on the Respondent.
C. Registered and Used in Bad Faith
Under the third element, a complainant must prove that a disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
In this regard, section 3.1.4 of the WIPO Overview 3.0 states that “panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
The Complainants’ trademarks are renowned worldwide and contain significant goodwill. Therefore, the fact that the disputed domain names incorporate the Complainants’ marks in their entirety as a prominent element is, in itself, sufficient to satisfy the element of bad faith. It is implausible that the Respondent did not know of the Complainants and their rights, or at least that the marks belonged to large hotel chains, before proceeding to register the disputed domain names.
The Respondent then went on to use the disputed domain names to advertise the exact services offered by the Complainants’ hotel chains under the respective trademarks. This creates a real risk that Internet consumers would be misled into thinking they were official websites or authorized by the Complainants and offered legitimate hotel booking services. Therefore, the Respondent used the disputed domain names to ride on the Complainants reputation for commercial gain, by creating a likelihood of confusion with the Complainants within the meaning of paragraph 4(b) of the Policy. The fact that the websites now resolve to domain advertisements or do not resolve to an active website is simply another avenue for commercial gain through the possibility to sell the disputed domain names to the highest bidder due to the inherent value of the trademarks contained in them.
The Panel concludes that the Respondent is obviously targeting the Complainants with the intent to profit from their substantial goodwill and has failed to submit a response to the contrary, and that the disputed domain names were thus registered and used in bad faith. As such, the final requirement of the UDRP is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <accorhotel-xingji.com>, <pullmanzx.com>, <pullmanzy.com>, <sofitel-bj.com>, <sofitelhq.com> and <sofitelsh.com> be transferred to the Complainants.
Date: December 4, 2019