WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR Société Anonyme v. JT2M
Case No. D2006-1548
1. The Parties
The Complainant is ACCOR Société Anonyme, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is JT2M, Tarbes, France.
2. The Domain Name and Registrar
The disputed domain name <ticketsrestaurant.info> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2006. On December 7, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 11, 2006, Network Solutions, LLC 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, 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, which was received at the Center by e-mail on January 2, 2007, and in hardcopy on January 17, 2007. 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 January 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Alexandre Nappey as the sole panelist in this matter on February 22, 2007. 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, operates in nearly 100 countries with 160,000 employees, in the areas of hotel, tourism and corporate services.
Since 40 years the Complainant provides luncheon voucher services under the trademark TICKET RESTAURANT allowing employees to have lunch outside the workplace in an affiliated restaurant of their choice, while enabling employers to benefit from exemptions to certain taxes and payroll charges.
The TICKET RESTAURANT service has in the French market around 45,000 companies/customers and 150,000 affiliated restaurants. It is also available in more than 30 countries around the world.
The Complainant is the owner of numerous trademarks, among which:
- TICKET RESTAURANT, International Trademark filed on December 30, 2003, under n° 822486 and registered for products and services in classes 9, 16, 35, 36, 39, 41, 42, 43 and 45, notably designating numerous European Union Member States and the United States of America;
- TICKET RESTAURANT, French trademark filed on February 25, 1999, under n°99777641, and registered for products and services in classes 9, 16, 36 and 42;
- TICKET RESTAURANT, French trademark filed on June 28, 1996, under n° 96632077, and registered for products and services in classes 9 and 38 (pending renewal);
- TICKET RESTAURANT, French trademark filed on October 8, 1991, under n°1697494, and registered for products and services in classes 16, 36 and 42 (live).
The Complainant also holds various domain names among which:
- <ticketrestaurant.com> registered on June 15, 1999;
- <ticketrestaurant.fr> registered on September 10, 2003;
- <ticketrestaurant.com.fr> registered on May 15, 2000.
The Respondent registered the domain name <ticketsrestaurant.info> on February 16, 2006.
Having noticed the disputed registration the Complainant first tried to settle the matter amicably and sent a cease and desist letter to the Respondent on April 19, 2006. Despite two reminders dated May 26 and October 24, 2006, this formal notice remained unanswered.
Therefore, the Complainant decided to file a complaint under the UDRP and started the present proceeding.
The registration of the domain name was scheduled to expire on February 16, 2007, i.e. during the proceeding.
Nonetheless, at request from the Center, the Registrar informed the parties and the Center on January 19, 2007, that the domain name would remain on lock status during the pending UDRP proceeding.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical or at the very least confusingly similar to its well-known trademark TICKET RESTAURANT.
It is the Complainant’s opinion that the domain name entirely reproduces the trademark TICKET RESTAURANT except the mere adjunction of the mute letter “s” between the words “ticket” and “restaurant”, which only denotes plurality in French or English languages.
The Complainant also reminds that it has been held in many WIPO decisions that the Top Level Domain, such as “.info” in the present case, shall be disregarded while determining whether a domain name is identical or not to a trademark, and that this Top Level Domain does not avoid any likelihood of confusion.
According to the Complainant, the Respondent has no right or legitimate interests in the disputed domain name since it is not affiliated to the Complainant, nor it has been authorized to register or to make use of the TICKET RESTAURANT trademark, even to incorporate the Complainant’s trademark in a domain name. The Respondent is not commonly known under the name TICKET RESTAURANT nor it has used the expression TICKET RESTAURANT in connection with a bona fide offering of goods or services.
The Complainant claims that TICKET RESTAURANT is not the generic expression commonly used to describe the service offered by the Complainant. The official expression is indeed “titre restaurant” or “chèque repas”, as stated for instance in the French financial law.
At last the Complainant contends that the domain name <ticketsrestaurant.info> has been registered and is used in bad faith since the Respondent, which is furthermore established in France, must have been aware of the Complainant’s well-known trademark at the time the domain name was registered.
The use of the domain name to resolve to a parking page provided by the registrar is considered by the Complainant as a passive holding. The Complainant reminds that the Respondent has been involved in previous UDRP proceedings and did not answer to the various warning letters and e-mails sent by the Complainant.B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with Paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under Paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above cited elements are the following:A. Identical or Confusingly Similar
The Panel accepts the Complainant’s contention that it has established rights in the mark TICKET RESTAURANT deriving from its numerous registrations and its extensive use as a trademark for approximately forty years.
Having regard to the evidence provided by the Complainant - and especially the numerous trademark registrations annexed to the Complaint - the Panel considers the trademark TICKET RESTAURANT being sufficiently distinctive (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. WIPO Case No. D2000-0047)
Furthermore, the Panel agrees with the Complainant - who is the sole user of the trademark - that TICKET RESTAURANT is not the French generic term for luncheon voucher.
The Panel also finds that the trademark TICKET RESTAURANT, as being registered for years, and being widely used by the Complainant to promote its luncheon voucher services, has acquired a reputation, at least in France, where both parties are established.
The domain name <ticketsrestaurant.info> is almost identical to the Complainant’s trademarks, the only difference being the adjunction of the letter “s” in the word “ticket”, and the Top Level Domain (TLD) “.info”.
As far as the TLD is concerned, any domain name requiring a suffix or TLD, it is well established that the suffix is not a distinguishing feature and is without legal significance (see for instance Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico WIPO Case No. D2000-0477, Gamefly Inc v. James Martin WIPO Case No. D2006-0236).
The mere inclusion of the mute letter “s” to the word “ticket” may be interpreted as a plural form in both French or English languages, and is not a distinctive feature which could avoid the likelihood of confusion between the trademark and the disputed domain name (see for instance Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc. WIPO Case No D2004-0359, Halcyon Yarn, Inc. v. Henry Chan WIPO Case No. D2004-0336).
Therefore the Complainant has met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).B. Rights or Legitimate interest
The Complainant contends that the Respondent is not affiliated to and has never been authorized to register or use the Complainant’s trademark. The Respondent is not commonly known under the TICKET RESTAURANT trademark, no more it is using the domain name <ticketsrestaurant.info> in connection with a bona fide offering of goods and services.
At the time the complaint was filed, the domain name resolved to a parking page from the French provider Amen (reseller of the registrar Network Solutions LLC) through which the domain name has been registered.
The domain name is now inactive given that it came to expiry on February 16, 2007.
On the basis of the Complainant’s assertions and supporting evidence, unchallenged by the Respondent although it had been given the opportunity to do so pursuant to paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in connection with the disputed domain name.
C. Registered and used in Bad Faith
Finally, the Complainant is required to prove that the domain name in issue has been registered and is used in bad faith.
The trademark TICKET RESTAURANT has been registered for approximately forty years. It is widely-known in France where the parties are located.
As a matter of fact, on balance, the Panel believes that the Respondent was aware of the Complainant’s earlier rights on the trademark TICKET RESTAURANT at the time it registered the domain name <ticketsrestaurant.info>. Accordingly, the registration was performed with the intent to infringe the Complainant’s rights.
This registration is clearly in breach of the provisions set forth in the domain name registration agreement, and the Respondent did not provide any response to the Complaint to support any good faith registration.
Consequently the Panel rules that the domain name has been registered in bad faith.
Concerning the use of the domain name at issue, the Complainant claims that it resolves to a parking page of the French provider Amen, and that such use should be analyzed as a “passive holding” of the domain name.
The Panel notes that in certain circumstances mere passive holding has been held to constitute use of the domain name in bad faith, (see for instance Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties WIPO Case No. D2005-1085).
In light of the particular circumstances of the case the Panel is satisfied that the present “passive holding” can and does amount to bad faith use:
- As stated above, the Complainant’s trademark has acquired a strong reputation in its business;
- The Respondent did not provide evidence of any actual or planned good faith use of the domain name;
- No change occurred in the domain name use even after the Respondent received the cease and desist letter from the Complainant;
- The Respondent has been involved in at least one previous UDRP proceeding. (and not “many” as stated by the Complainant). Anyway in GROSBILL v. JT2M WIPO Case No. D2006-1000, the Panel ordered in very similar circumstances that the domain name <grosbill.info>, which had been registered only a few days before the disputed domain name be transferred to the Complainant.
The above leads the Panel to the conclusion that the domain name is being used in bad faith by the Respondent.
Therefore the Panel is satisfied that the domain name <ticketsrestaurant.info> has been registered and is being used in bad faith.
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 <ticketsrestaurant.info> be transferred to the Complainant.
Dated: March 8, 2007