The Complainants are Accor SA and SoLuxury HMC, France, represented by Dreyfus & Associés, France.
The Respondent is Syed Hussain, Domain Management MIC, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2020. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on March 17, 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 Complainants claim that pursuant to paragraph 3(a) of the Rules “any person or entity” may initiate a proceeding. They state that the second-named Complainant (the “Second Complainant”) is a wholly owned subsidiary of the first Complainant (the “First Complainant”) and note that previous UDRP panels have held that members of the same group may constitute an “entity”: Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L’Oréal SA v. Cong Ty Co Phan Phununet,WIPO Case No. D2010-0603 and L’Oréal SA Helena Rubenstein Lancôme Parfums Et Beauté & Compagnie v. Spiral Matrix,WIPO Case No. D2006-0869. As the Complainants are acting against the same registrant, they additionally rely on previous UDRP decisions that it is efficient and consistent with the Policy to allow consolidation of their complaints: Accor & SoLuxury HMC v. Chenqi,WIPO Case No. D2018-1623. The Complainants state that Accor is a leading global hotel operator founded in 1967. It has been operating for more than 45 years and claims to be a world leader in economy and mid scale hotels. The Complainants operate 4954 hotels in 11 countries. The Complainants’ Group includes the hotel chains such as SOFITEL, RAFFLES, ONEFINESTAY, FAIRMONT, MGALLERY, PULLMAN, SWISSOTEL, GRAND MERCURE, NOVOTEL, MAMA SHELTER, MERCURE, and IBIS. The First Complainant acquired SOFITEL HOTELS & RESORTS in 1980. Sofitel’s official website is “www.sophitel.com”. There are around 126 SOFITEL hotels in 45 countries. The MERCURE 3 star chain of hotels was acquired by the First Complainant in 1975. There are around 812 MERCURE hotels in 62 countries. The Complainants state that they are the owners of the following trademarks. Trademark Origin Registration Number Date of Registration Classes SOFITEL International Registration 863332 August 26, 2005 35, 39, 43 SOFITEL International Registration 939096 August 30, 2007 35, 36, 43, 44 SOFITEL European Union 008331845 November 14, 2009 25 MERCURE International Registration (including Austria, Morocco, Poland, Italy) 403334 December 14, 1973 8, 16, 21, 39, 41, 42 MERCURE United States 5565463 September 18, 2018 43 ACCOR International Registration (including China, Germany, Egypt, Italy, Russian Federation, Turkey, Vietnam, Algeria, UK) 742032 August 25, 2000 38 ACCOR United States 2838984 May 4, 2004 39, 42 The Complainants and their affiliates operate the following domain names: The disputed domain names were registered on December 5, 2018. The disputed domain names allegedly resolved to various fraudulent websites seeking to install malicious applications. 5. Parties’ Contentions A. Complainants The Complainants assert their rights in the trademarks SOFITEL, MERCURE, and ACCOR. They contend that the disputed domain names are identical or confusingly similar to their trademarks. They further contend that the addition of the generic Top-Level Domain (“gTLD") “.com” is insufficient to avoid a finding of confusing similarity. The Complainants also state that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not been authorized to use the trademarks. The Respondent is not commonly known by the disputed domain names or the names or trademarks SOFITEL, MERCURE, and ACCOR. Finally, the Complainants contend that the disputed domain names were registered in full knowledge of the Complainants’ rights at the time of registration. The Complainants also contend that the Respondent is using the disputed domain names in bad faith to attract Internet users to its websites by creating a likelihood of confusion with the Complainants’ trademarks as to source, sponsorship, affiliation or endorsement. Its offer to sell the disputed domain names in excess of out of pocket expenses is also relied on. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding: (i) that the disputed domain names are identical or confusingly similar to a trademark in which the Complainants have rights; and The Complainants have provided evidence of their International and European Union registrations for SOFITEL since 2005 and subsequently, their International and United States registrations for MERCURE since 1973. They have also provided details of their International and United States registrations for ACCOR since 2000 and subsequently. They have further provided evidence of domain name rights for the three trademarks in issue dating back to 1996 – 1998 respectively. Accordingly, the Panel is satisfied that the Complainants have clearly and sufficiently demonstrated their rights to those three marks. Further, the Panel is satisfied that the Complainants are respectively well known by the names SOFITEL, MERCURE, and ACCOR, for hotel accommodation and associated services. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that the test for identity or confusing similarity under the first element involves a side-by-side comparison of the domain name and the textual components of the relevant trademark. The Panel finds that on a side-by-side comparison the dominant elements of each disputed domain name are identical to the separate marks SOFITEL, MERCURE, and ACCOR, in which the Complainants have rights. If the Complainants’ individual trademarks are to be considered separately then each of the disputed domain names is similar to the Complainants’ trademarks in which they have rights. As for the “.com” gTLD suffix, section 1.11.1 of the WIPO Overview 3.0 states that a gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element. Section 1.11.2 further states that the practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to “new gTLDs”) as the ordinary meaning applied to a particular gTLD would not necessarily impact assessment of the first element. See also the UDRP decision of Société Air France v Registration Private, Domains By Proxy, LLC / Albuquerque, hwuaye,WIPO Case No. D2019-0191. The Panel therefore accepts that the gTLD “.com” may be disregarded for the purposes of comparison under the first element. Therefore, the Panel finds that the disputed domain names are identical to the Complainants’ trademarks. If the Complainants’ trademarks are each to be considered separately, then the disputed domain names are similar to the Complainants’ trademarks. The Panel therefore finds that the paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainants. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain names, even if it had acquired no trademark or service mark rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainants. The Complainants have stated, and the Panel accepts, that they have not authorized the Respondent to use their trademarks, or to seek registration of any domain name incorporating those marks. The Complainants have also stated, and the Panel also accepts, that the Respondent is not commonly known by the disputed domain names or by the names SOFITEL, MERCURE, and ACCOR in accordance with paragraph 4(c)(ii) of the Policy. In respect of the above, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to rights in the disputed domain names. The Complainants further note that each of the disputed domain names redirects to various fraudulent websites seeking to install malicious applications. The Panel finds that installing malware on Internet users’ computers does not and cannot qualify as bona fide offering of goods or services or as a legitimate noncommercial or fair use. In addition, the Complainants note that email servers have been configured on the disputed domain names and that there is a risk that the Respondent is engaged in a phishing scheme. On this basis, they assert that the disputed domain names cannot be used for any type of legitimate business or services. Again, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim for legitimate interests in the disputed domain names. Overall the Panel finds that the Complainants have satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainants. C. Registered and Used in Bad Faith The Panel is also satisfied that the disputed domain names were registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainants’ trademarks SOFITEL, MERCURE, and ACCOR are well known throughout the world. The fact that the Respondent has registered as the disputed domain names combinations of the Complainants’ separate trademarks makes it implausible that the Respondent was unaware of the Complainants’ marks and activities when it registered these. The Panel agrees with the submission from the Complainants that knowledge of a Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain names proves bad faith registration (Alstom v Domain Investments LLC,WIPO Case No. D2000-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia,WIPO Case No. D2007-0077). (ii) This is confirmed by information provided by the Complainants that the Respondent has been subject to several UDRP complaints in which his bad faith has been recognized. Significantly, amongst these UDRP complaints, is a case which involves the present Respondent and the First Complainant (Accor v Domain Management MIC, Syed Hussain,WIPO Case No. D2018-1754). (iii) Without any rights or legitimate interest in the marks corresponding to the disputed domain names, the Respondent’s registration of the disputed domain names is indicative of bad faith. For these reasons cumulatively, the Panel finds that the ground is well established. The Panel is also satisfied that the disputed domain names have been used in bad faith for the following reasons: (ii) The Complainants have provided evidence that the disputed domain names redirect to various fraudulent websites proposing to install malicious applications. The Panel agrees with the Complainants’ submission that such random uses of the disputed domain names cannot reasonably be considered as bona fide use of the disputed domain names. (ii) The Panel is satisfied that the Respondent’s use of the disputed domain names was intended to disrupt the Complainants’ business, in particular by damaging its reputation. Members of the public visiting the disputed domain names may well believe that they are related to the Complainants or their businesses whereas that is not the case and Internet users are instead redirected to random websites including sites seeking to download malware. (iii) The Respondent’s immediate offer to sell the domain names for USD 1,250 then USD 950 despite having received a cease and desist letter is also, in the Panel’s view, an indication that the Respondent aimed to sell the domain names to the Complainants or to a competitor of the Complainants. This itself constitutes evidence of registration and use in bad faith. (iv) The Complainants have provided evidence that email servers on the disputed domain names have been configured. The use of an email address with a domain name whose composition makes direct reference to the Complainants and their marks creates a risk that the Respondent is engaging in a phishing scheme. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainants. 7. Decision 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 Andrew Brown Q.C.
(including Japan, China, Singapore, US, Vietnam, Egypt, Turkey and Russian Federation)
(Including Australia, Japan, Kenya, Mexico, China, Vietnam, United States)
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: March 24, 2020
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