WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and SoLuxury HMC v. Tran Bien
Case No. D2020-0800
1. The Parties
The Complainants are Accor and SoLuxury HMC, France, represented by Dreyfus & associés, France.
The Respondent is Tran Bien, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <moorehousesofitel.top> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 20, 2020.
The Center verified that the Complaint together with the amended 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 April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 30, 2020. 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 Complainant Accor is a French multinational hospitality group that owns, manages and franchises hotels, resorts, and vacation properties in 110 countries, with more than 4,900 hotels. It is organized as a publicly traded stock corporation registered and headquartered in Issy-les-Moulineaux, a suburb of Paris, France. The Complainant SoLuxury HMC (“SoLuxury”) is a wholly owned subsidiary, organized as a limited company registered and headquartered at the same address. The Complaint attaches documentation showing that SoLuxury manages the SOFITEL hotel brand for the Accor group worldwide, under an agreement registered in April 2008.
In 1980 the Complainant Accor acquired the SOFITEL hotel and resort brand, which was launched in 1964. It now comprises some 130 hotels in 45 countries, many in Asia (including Viet Nam where the Respondent is located). The Complainants operate a website at “www.sofitel.com” (a domain name registered in 1997).
The Complainant Accor holds numerous trademark registrations for SOFITEL as a word mark, including International Trademark Registration Number 863332 (registered August 26, 2005) designating, among others, Viet Nam, China, Japan, Republic of Korea, and Singapore. Previous UDRP panels have acknowledged that the SOFITEL mark is distinctive and well known internationally. See, e.g., Accor and SoLuxury HMC v. Ayman Morsy, Vcreation, WIPO Case No. D2018-1576; Accor and SoLuxury HMC v. He Yong Jian, WIPO Case No. D2016-1919.
Among Accor’s other hotel brands is MERCURE, and one of its properties is “Mercure The Moorhouse Ikoyi Lagos”, a “stylish”, “boutique hotel” in Lagos, Nigeria, advertised on the Complainant Accor’s website at “www.accor.com”, as well as on travel reservation websites.
The Registrar reports that the Domain Name was created on October 21, 2019. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Tran Bien of Han Noi, Viet Nam.
At the time of this Decision, the Domain Name redirects to different SOFITEL pages on the Complainant Accor’s website at “www.accor.com”, depending on the location of the user’s browser, and this has been true since the Complainants discovered the Domain Name in November 2019. The Registrar’s WhoIs record also showed that the Domain Name had been configured for email servers, indicating that it could be used for phishing scams (sending fraudulent emails impersonating the Complainants), even if it was never used for an associated website.
The Complainants’ representative corresponded with the Registrar to learn the identity of the registrant and assert the Complainants’ trademark rights, but without success. This proceeding followed.
5. Parties’ Contentions
The Complainants assert that the Domain Name is confusingly similar to their registered SOFITEL mark, which is incorporated in its entirety with the addition of generic terms that do not avoid confusion. The Complainants deny any affiliation with the Respondent and observe that there is no evidence that the Respondent has a corresponding name or business or other legitimate interests in the Domain Name.
The Complainants’ infer bad faith in the registration of the Domain Name because of the fame and distinctiveness of the SOFITEL mark and the fact that the Domain Name was promptly and continuously redirected to the Complainants’ own website. The Respondent was clearly aware of the Complainants’ SOFITEL mark and yet had no conceivably legitimate reason to use it, suggesting opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303. This violates the Respondent’s undertaking under the registration agreement not to use the Domain Name in a manner that infringes on the legal rights of others. A trademark search or simple search engine query would have revealed the Complainant’s rights.
The Complainants argue that there has been bad faith in the use of the Domain Name by redirection to the Complainants’ website because it conditions users to believe that the Domain Name is affiliated with the Complainants and therefore leads to “future” misdirection for commercial gain if the Respondent associates the Domain Name with other websites. Another danger is the risk that the Domain Name will be used for email phishing scams. Finally, given the renown of the SOFITEL mark, “there simply cannot be any actual or completed good faith use of the disputed domain name by Respondent or a third party unrelated to Complainant, as it would invariably result in misleading diversion and taking unfair advantage of Complainants’ rights.”
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
6.1 Preliminary Matter: Multiple Complainants
The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives UDRP panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, UDRP panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.
The record shows that the Complainant SoLuxury is a subsidiary of the Complainant Accor and manages on its behalf the SOFITEL marks relevant to the Domain Name. Therefore, the Panel finds efficiency, and no prejudice, in allowing the Complaint to proceed with both Complainants.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name incorporates the Complainants’ registered SOFITEL mark in its entirety, adding the English dictionary word “house” and the English family name “Moore” (or alternatively the family names “Moorehouse” or, slightly misspelled, “Moorhouse”). The Panel finds that these additions do not avoid confusing similarity, WIPO Overview 3.0, section 1.8. Under the totality of the circumstances, the Domain Name must be considered confusingly similar to the Complainant’s mark.
The generic Top-Level Domain (“gTLD”) “.top” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. WIPO Overview 3.0, section 1.11.2.
The Panel concludes, therefore, that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainants in this proceeding have demonstrated trademark rights and a lack of permission to use the Complainants’ mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, and none are evident from a perusal of the record or the use of the Domain Name to redirect to the Complainants’ website pages and configure email servers.
The Panel concludes that the Complainants prevail on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, but these are expressly not exclusive. The facts here are different, but they also indicate bad faith, and the Respondent has not come forward to offer any other explanation.
The SOFITEL mark is indeed distinctive, well known internationally, and long-established. It is a coined term, not a dictionary word in French or English, and the addition to the Domain Name of a string that mimics the name of another hotel in the Accor group enhances suspicion that the Respondent was targeting the Complainants. There is no evident legitimate use of the Domain Name; it does not lend itself to generic use. The fact that it was promptly redirected to the Complainants’ own website and configured for email use is, however, entirely consistent with preparation for a fraudulent phishing scam, because a targeted victim examining the source of a message could look to the corresponding website and be lulled by the fact that it appeared to be affiliated with the Complainants. Unless and until a target reports receiving such an email, the Complainants may have no knowledge that an attack has been launched, but such attacks are not uncommon. See, e.g., Jones Lang LaSalle IP, Inc. v. George Smith, WIPO Case No. D2018-2478.
The Panel notes that another recent UDRP decision appears to involve the same Respondent, with the same pattern of registering a domain name based on a trademark, with the same Registrar and privacy service, also in the “.top” gTLD, and then using it to redirect to the complainant’s own website. Sidley Austin LLP v. Domain Administrator, See PrivacyGuardian.org / Bien, Bien Tran, WIPO Case No. D2019-2708. The UDRP panel ordered the transfer of the disputed domain name in that proceeding.
As the Complainants observe here, the unauthorized use of a trademark in a domain name leads to a false impression of source or affiliation that is reinforced by deliberate redirection of the Domain Name to the trademark holder’s website. This can be a foundation for fraud, either by email or other channels, or in subsequent redirection of the Domain Name to other websites. Where the Respondent offers no alternative explanation, and none is likely, it can be taken as an indication that the Domain Name was registered and used in bad faith within the meaning of the Policy. The Panel is not obliged to withheld that finding until the scheme sown in bad faith ripens to fruition.
The Panel concludes on the available record that the Complainants have established the third element of the Policy, bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <moorehousesofitel.top>, be transferred to the Complainant SoLuxury.
W. Scott Blackmer
Date: June 8, 2020