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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and Soluxury HMC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Kenneth Goh

Case No. D2021-2935

1. The Parties

Complainants are Accor and Soluxury HMC, France, represented by Dreyfus & associés, France.

Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Kenneth Goh, Malaysia.

2. The Domain Name and Registrar

The Disputed Domain Dame <sosofiteloxleyklcc.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from named Respondent and contact information in the Complaint. TheCenter sent an email communication to Complainants on September 13, 2021, providing the registrantand contact information disclosed by the Registrar, and inviting Complainants to submit anamendment to the Complaint. Complainants filed an amendedComplainton September 16, 2021.

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 Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. Respondent’s informal communication was received by the Center on September 21, 2021. The Center sent Commencement of Panel Appointment Process to the Parties on October 12, 2021.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on October 19, 2021. 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

Complainants are part of the Accor corporate group, headquartered in France, which operate more than 5,100 hotels in 110 countries. SOFITEL is Complainants’ luxury hotel brand with a presence on five continents with 129 hotels in 45 countries. Complainants are the owners of the “SO/SOFITEL” hotel in Kuala Lumpur City Centre (“KLCC”).

Complainant, Soluxury HMC, is the owner of International Trademark SO/SOFITEL (design mark), No. 1255818, registered on April 16, 2015, designating inter alia, Singapore, Australia, Germany, Russian Federation, and United Kingdom, covering services in classes 41, 43, and 44; and

International Trademark SOFITEL, No. 863332, registered on August 26, 2005, designating inter alia, Singapore, United States of America, Australia, China, and Japan, covering services in classes 35, 39, and 43.

Complainant, Accor, is the owner of International Trademark ACCOR (design mark), No. 1471895, registered on December 24, 2018, designating inter alia, Australia, China, Japan, European Union, Russian Federation, and United States of America, covering services in classes 35, 36, 38, 39, 41, 42, 43, and 44.

Complainants operate websites at <sofitel.com>, which was registered on April 11, 1997, and <sosofitel.com>, which was registered on September 26, 2012.

The Disputed Domain Name was registered on March 12, 2021.

5. Parties’ Contentions

A. Complainants

Complainants SOFITEL and SO/SOFITEL trademarks enjoy worldwide reputation. The Disputed Domain Name incorporates Complainants’ SO/SOFITEL mark with the additional terms “oxley” and “klcc”.

The Disputed Domain Name creates a likelihood of confusion because it incorporates the name of Complainants’ hotel as well as the abbreviation of Kuala Lumpur City Centre where Complainants operate a hotel.

The Disputed Domain Name also associates Complainants’ trademark with the sign OXLEY that seems to refer to another company that is not related to Complainants, which may lead Internet users to believe that there is a partnership between Complainants and this company while it is not the case, or that the Disputed Domain Name is official or at least endorsed by Complainants.

The Disputed Domain Name <sosofiteloxleyklcc.com> resolves to a website reproducing Complainants’ SO SOFITEL and ACCOR marks as well as offers to make appointments. The Disputed Domain Name is also set up with the following email server: “mail.sosofiteloxleyklcc.com”. As such, there might be a risk of phishing.

The incorporation of Complainants’ trademark in its entirety is sufficient to establish that the Disputed Domain Name is identical or confusingly similar to Complainants’ registered trademarks. The generic term “klcc” correspond to the name of one of Complainants’ hotel, namely SO/SOFITEL in KLCC, while the term “oxley” refer to another company that is not related to Complainants. Adding a term to the complainant mark does not influence the similarity between a trademark and a domain name.

The Disputed Domain Name towards a website reproducing Complainants’ brands and logos SO/SOFITEL, ACCOR and many other trademarks owned by Complainants, and offering the possibility to make an appointment, creating in that way a false impression that Complainants have endorsed it or that it is an official website. By registering the Disputed Domain Name, Respondent has created a likelihood of confusion with Complainants’ trademark. It is likely that the Disputed Domain Name could mislead Internet users into thinking that it is, in some way, controlled by or associated with Complainants and thus may heighten the risk of confusion.

Respondent is neither affiliated with Complainants in any way nor has he been authorized by Complainants to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The registration of the SOFITEL and SO/SOFITEL trademarks precede the registration of the Disputed Domain Name for years.

Respondent is not commonly known by the name SOFITEL or SO/SOFITEL or the Disputed Domain Name, given the notoriety surrounding Complainants’ trademark and the fact that it is exclusively associated with Complainants. There is simply no evidence that Respondent may be commonly known by the name SOFITEL and SO/SOFITEL.

Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Given Complainants’ goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to Complainants’ trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the Disputed Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of Complainants’ rights. Bad faith can be found where Respondent “knew or should have known” of Complainants’ trademark rights and, nevertheless registered Disputed Domain Name in which it had no rights or legitimate interests.

Respondent uses the Disputed Domain Name to direct Internet users to a website that reproduce Complainants’ brands and logos SO/SOFITEL, ACCOR, and many other Complainant’s trademarks without authorization. Respondent is voluntarily creating a risk of confusion by suggesting that the Disputed Domain Name is linked to Complainants and therefore would benefit from their audience’s trust to – possibly – later redirect them to other websites.

Respondent’s primary motive in registering and using the Disputed Domain Name was to capitalize on or otherwise take advantage of Complainants’ trademark rights, through the creation of a likelihood of confusion. This behavior is likely to mislead the Internet users to link the website to which the Disputed Domain Name is directed to that of Complainants. They may also cause the Internet users to wrongly believe that there is a possible relationship between the source, sponsorship, affiliation, or warranty of services present on the fraudulent website.

Given Complainants’ goodwill and renown worldwide, and the nature of the Disputed Domain Name which is confusingly similar to Complainants’ trademark, there simply cannot be any actual or completed good faith use of the Disputed Domain Name by Respondent or a third party unrelated to Complainants, as it would invariably result in misleading diversion and taking unfair advantage of Complainants’ rights.

B. Respondent

Respondent provided the following non-formal communication:

“Please note that I am just a freelance web designer (freelancer) and the domain is based on a client (a real estate agent in Malaysia) request to have the domain name. I do not have any intention whatsoever, the content is based on the sales kit and information provided and created based on the content provided by the client and it has not been updated since it was created. The client can no longer be contacted and this domain name will not be renewed when expired, this domain can be transferred to any party or at least refund the amount paid for this domain. There is no point for me to keep this domain name.”

While the Panel notes that the Respondent claims to have registered the Disputed Domain Name for a client, the Respondent did not provide any further information about its customer. The Panel notes that certain obligations arise from the registration of a domain name (and the acceptance of the registration agreement), and in the circumstances of the case (noting no further details of the customer are known) the Panel will consider the Registrar-confirmed registrant of the Disputed Domain Name (i.e.: Kenneth Goh) as the Respondent. Therefore, references to the use by the Respondent shall be construed to include the final user of the Disputed Domain Name (if any). See Hays plc v. Privacy service provided by Withheld for Privacy ehf / George Smith, WIPO Case No. D2021-2564.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainants have demonstrated they own registered trademark rights in the SO/SOFITEL trademark worldwide and that the SO/SOFITEL mark is used in Malaysia. The addition of the terms “oxley” and “kllc” do not avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainants have rights.

B. Rights or Legitimate Interests

Complainants presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and has not at any time been commonly known by the Disputed Domain Name.

The Disputed Domain Name resolves to a website that claims to offer tours and appointments at Complainants’ SO/SOFITEL hotel in Kuala Lumpur, Malaysia. This use does not satisfy the “Oki Data test” for legitimate interests in the Disputed Domain Name because Respondent does not appear to be actually offering appointments with the hotel.

Further, Respondent’s website does not disclose any relationship with Complainants. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The evidence indicates Respondent obtained the Disputed Domain Name years after Complainants had begun using the SO/SOFITEL mark on a worldwide basis and specifically in Kuala Lumpur, Malaysia, indicating that Respondent was aware of Complainants’ rights.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name, rather Respondent states it registered the Disputed Domain Name on behalf of a third party that sought to sell units at Complainants’ hotel without authorization. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556.

The Panel finds that Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after Complainants first registered and used their SO/SOFITEL and SOFITEL trademarks. The evidence on the record provided by Complainants with respect to the extent of use of their SO/SOFITEL and SOFITEL trademarks, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, Respondent most likely knew of Complainants SO/SOFITEL and SOFITEL trademarks, and knew that it had no rights or legitimate interests in the Disputed Domain Name. Complainants have provided evidence that the Disputed Domain Name was used in connection with an attempt to apparently offer, without authorization, units at Complainants’ hotel in Kuala Lumpur, Malaysia.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15of the Rules, the Panel orders that the Disputed Domain Name <sosofiteloxleyklcc.com> be transferred to Complainants.

Colin T. O'Brien
Sole Panelist
Date: November 2, 2021

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