WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Accor S.A. v. jacoop.org

Case No. D2007-1257

 

1. The Parties

The Complainant is Accor S.A., Evry Cedex, France, represented by Cabinet Dreyfus & Associs, France.

The Respondent is jacoop.org, Istanbul, Turkey.

 

2. The Domain Names and Registrar

The disputed domain names

<accorhotelsturkey.com>
<accorhotelsturkiye.com>
<ibisturkey.com>
<ibisturkiye.com>
<novotelturkey.com>
<novotelturkiye.com>

are all registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2007. On August 28, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 28, 2007, Go Daddy Software 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”), 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 September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2007.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 24, 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 is the European leader and one of the world’s largest business organizations in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90 countries worldwide. More particularly, the Complainant operates several hotels especially in Europe.

The Complainant holds, among others, the trademarks NOVOTEL, IBIS, and ACCOR. Complainant owns and mainly communicates on the Internet via the website “www.accorhotels.com” in order to allow the Internet users a quick and easy way to find and book hotels.

The NOVOTEL mark is in use in 58 countries around the world, with 397 hotels. Complainant owns and mainly communicates on the Internet via the website “www.novotel.com” in order to allow the Internet users a quick and easy way to find and book hotels.

The IBIS mark is in use around the world, with more than 750 hotels. The Complainant owns and mainly communicates on the Internet via websites, and among others “www.ibishotel.com” in order to allow the Internet users a quick and easy way to find and book hotels.

The Complainant is the owner of numerous registered trademarks throughout the world related to its Accor’s hotels, especially in the field of hotels and restaurants and of Internet’s services, among which are included:

 

- French trademark ACCOR SERVICES, No. 003026598, filed on May 9, 2000 and covering goods and services in classes 38 and 42;

- Community trademark ACCOR SERVICES + logo, No. 006160576, filed on August 2, 2007, and covering goods and services in classes 9, 16, 35, 36, 43;

- Community trademark ACCOR HOTELS ALL SEASONS + logo, No. 005658778, filed on February 2, 2007, and covering goods and services in classes 35, 36, 43;

- Community trademark ACCORHOTELS.COM 2006 + logo, No. 004779617, filed on December 13, 2005, and covering good and services in classes 9, 20, 25, 26, 43;

- US trademark ACCOR No. 75733607 filed on January 30, 1998 and covering services in classes 39 and 42;

- International trademark ACCOR, No. 742032, filed on August 25, 2000, and covering goods and services in class 38 (Internet specification);

- International trademark ACCOR No. 537520, filed on March 28, 1989, and covering goods and services in classes 5, 8, 9, 11, 18, 21, 24, 25, 28 and 37;

- International trademark ACCOR No. 480492, filed on November 10, 1983, and covering products and services in classes 16, 39 and 42 (hotels and restaurants services);

- International trademark ACCOR + logo No. 687060, filed on January 19, 1998, and covering goods and services in classes 16, 36, 39, 41 and 42 (hotels and restaurants services);

- International trademark ACCOR CASINOS + logo No. 756453, filed on March 20, 2001, and covering goods and services in classes 16, 41 and 42 (hotels and restaurants services);

- International trademark ACCOR + logo No. 616274, filed on March 17, 1994, and covering goods and services in classes 16, 38, 39, and 42 (hotels and restaurants services);

- International trademark ACCOR + logo No. 727696, filed on December 28, 1999, and covering goods and services in classes 16, 39, and 42 (hotels and restaurants services).

The Complainant operates many domain names reflecting its trademark among which are included:

- <accor.com> registered on February 22, 1998;

- <accorhotels.com> registered on April 30, 1998.

The Complainant is the owner of numerous trademark registrations throughout the world covering the name “IBIS” including:

- IBIS ACCOR HOTELS, French Trademark + logo, n 3258174 filed on November 20, 2003 and covering products and services in classes 39 and 43;

- IBIS International Trademark + logo, n 420862 filed on February 18, 1976 renewed and covering products and services in classes 8, 20, 21, 29, 36, 37, 39 and 42;

- HOTEL IBIS International Trademark n 431254 filed on June 17, 1977 renewed and covering products and services in classes 16, 20, 21, 39 and 42;

- IBIS International Trademark n 541432 filed on July 17, 1989 renewed and covering products and services in classes 38, 39 and 42;

- IBIS International Trademark + logo, n 623070 filed on August 22, 1994 renewed and covering products and services in classes 16, 41 and 42;

- IBIS ACCOR HOTELS International Trademark + logo, n 829736 filed on May 13, 2004 and covering products and services in class 43, protected especially in Australia;

- IBIS Community Trademark n 001527720 filed on June 6, 2001 and covering products and services in classes 16, 39 and 42.

The Complainant operates many domain names reflecting its trademark among which are included:

- <ibishotel.com> registered on August 19, 1997;

- <ibishotels.com> registered on May 3, 2001.

Besides, the Complainant is the owner of numerous trademark registrations throughout the world covering the name, NOVOTEL including:

- NOVOTEL, International Trademark + logo, n 352918, filed on November 25, 1968, renewed and covering products and services in classes 11, 16, 19, 20, 28, 29, 42 ;

- NOVOTEL, International Trademark n542032, filed on July 26, 1989, renewed and covering services in class 42;

- NOVOTEL, International Trademark + logo, n 564565, filed on November 23, 1990, renewed and covering products and services in classes 16, 20, 21, 25, 35, 38, 39, 41, 42;

- NOVOTEL, International Trademark + logo, n618550, filed on May 31, 1994, renewed, covering products and services in classes 3, 16, 42;

- NOVOTEL, International Trademark n767863, filed on August 21, 2001 and covering products and services in class 38;

- NOVOTEL, International Trademark n785645, filed on June 25, 2002 and covering products and services in class 43;

- NOVOTEL, Community Trademark + logo, n003544137, filed on October 30, 2003 and covering products and services in classes 38, 41, 43.

The Complainant operates many domain names reflecting its trademark among which:

- <novotel.com> registered on August 19, 1997

- <novotelhotels.com> registered on May 3, 2001

 

5. Parties’ Contentions

A. Complainant

The Complainant noticed that the domain names <novotelturkey.com>, <novotelturkiye.com>, <accorhotelsturkey.com>, <accorhotelsturkiye.com>, <ibisturkey.com> and <ibisturkiye.com> were registered. A WHOIS Database search revealed that the domain names were registered by the Respondent.

Furthermore, both domain names direct Internet users to web pages proposing commercial links for goods and services in the related to the hotel business.

Before introducing this UDRP action, the Complainant sent cease-and-desist letters to the Respondent and to the Registrar by registered mail and e-mail on April 2 and 4, 2007, asking to amicably transfer the domain names <novotelturkey.com>, <novotelturkiye.com> and <accorhotelsturkey.com> based on Complainant’s trademark rights.

The Respondent did not receive these letters by mail because of an unknown address.

The Respondent answered by e-mail that he has no commercial purpose on these domain names and that he accepted to negotiate the transfer of said domain names. Furthermore he added that he registered also <ibisturkey.com>, <ibisturkiye.com> and <accorhotelsturkiye.com>.

Whereas the Respondent claimes that he has no commercial purpose regarding these domain names, he offered to transfer the six domain names for € 40, 000.

On July 5, 2007, after the Respondent’s reply and given the fact that it was evident that the Respondent was a cybersquatter, the Complainant made an offer of € 200 for these 6 domain names in order to reimburse the registration fees.

On July 5, 2007, the Respondent rejected the proposition and threatened the Complainant to transfer these domain names to their competitor.

As no amicable settlement has been found due to the Respondent’s bad faith, the Complainant has no other possibility than to file the present Complaint, on the following grounds.

The domain names are confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends as follows: The six disputed domain names are confusingly similar with the Complainant’s trademarks NOVOTEL, ACCOR and IBIS.

It is well established that the mere adjunction of the terms “Turkey” and “Turkiye”, insisting on the exploitation’s place, are generic terms. Numerous WIPO decisions recognize that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute and Geographic terms are generally considered as generic terms (see for instance Sanofi-Aventis v. Carmen Capone, WIPO Case No. D2006-0112 and PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629). In that way, they cannot be considered as protected terms.

As far as <accorhotelsturkey.com> and <accorhotelsturkiye.com> are concerned, the mere adjunction of the term “Hotels”, describing the activity, is not protected either. The mere addition of the term “Hotels” leads people to think that these domain names are specific to the hotels of ACCOR and are insufficient to avoid any confusion. The term “Hotels” actually increases the confusion because the term falls under the services provided by the Complainant. Numerous WIPO decisions recognize the addition of a generic denomination, in particular to a famous trademark, is not sufficient to avoid confusing similarities, but the addition of, for instance, the generic word “Hotels” to a trademark only suggests that the services and goods marketed are those of the trademark holder (Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102; Microsoft Corporation v. SL Mediaweb, WIPO Case No. D2003-0538 and Caesars World, Inc v. Alaiksei Yahorau WIPO Case No. D2004-0513).

It is well established that the specific top level of a domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (DZ Bank AG v. Bentz WIPO Case No. D2006-0414 and Gerling Beteiligungs-GmbH (GBG) v. World Space Corp WIPO Case No. D2006-0223) merely because it is necessary for the registration of the domain name itself. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous mark and the domain name.

As a result, the Complainant contends, it is obvious that the disputed domain names <novotelturkey.com>, <novotelturkiye.com>, <accorhotelsturkey.com>, <accorhotelsturkiye.com>, <ibisturkey.com> and <ibisturkiye.com> are strictly identical or at least confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain directly refers to the Complainant’s services.

The Respondent has no rights or legitimate interests in respect of the domain names

The Complainant contends as follows: The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use or register its trademarks and service marks, or to seek the registration of any domain names incorporating said marks.

Furthermore, the Respondent has no prior rights or legitimate interest in the domain names. The Respondent never used terms “Accor”, “Novotel” or “Ibis” in any way before or after the Complainant started their business.

The Respondent is not known under the name “Accor”, “Novotel” or “Ibis” or any similar term.

The conduct of the Respondent is, according to the Complainant, merely parasitical behavior. The Respondent is not making any legitimate non-commercial or fair use of the domain names, as the disputed domain names redirect internet browsers to a page proposing commercial links.

The domain names were registered and are being used in bad faith

The Complainant further contends as follows: With regard to registration in bad faith, it seems obvious that the Respondent knew or must have known the trademark NOVOTEL, ACCOR and IBIS at the time it registered the domain names. It seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain names as the very precise combination respectively of the words “Accor” with “Hotels” and “Turkey” or “Turkiye”, the words “Novotel” with “Turkey” or “Turkiye” and the words “Ibis” with “Turkey” or “Turkiye”, clearly indicates the Respondent had the Complainant in mind while registering the domain names in dispute.

The Respondent apparently did register the disputed domain names on purpose, to disrupt the Complainant’s business, as it used these domain names, <novotelturkey.com>, <novotelturkiye.com>, <accorhotelsturkey.com>, <accorhotelsturkiye.com>, <ibisturkey.com> and <ibisturkiye.com> with sponsored links to hotel websites. Such services are in competition with the Complainant which has a reputation for its high standard. It seems likely that the domain names are being used to take advantage of the well known trademarks ACCOR, NOVOTEL and IBIS and pass themselves off as businesses affiliated with the Complainant.

In light of the use of these domain names and the excessive price the Respondent proposes for their transfer, it seems evident that the Respondent has registered said domain names in order to resell them. Thus, the Respondent registered the domain names in dispute while being perfectly aware that it was infringing Complainant’s rights.

The Respondent also used the domain name in bad faith.

It appears that Respondent registered the disputed domain names in order to make a profit from his illegitimate registration, as it clearly appears in the correspondence when he is offering to sell it for € 40 000. This amount is much higher than the out-of pocket costs of registering and establishing the domain names. It has been established in previous WIPO decisions that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is an evidence of bad faith (DZ Bank AG v. Bentz, WIPO Case No. D2006-0414 and Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372).

The Respondent, by registering a domain name corresponding to a famous trademark, intentionally attempts to divert Internet user’s from the Complainant’s business by creating a likelihood of confusion with the Complainants’ trademarks. This behavior constitutes another evidence of bad faith use and may ruin the Complainant’s reputation, by attracting Internet user’s to a webpage that does not correspond to what they were looking for.

Finally, the Complainant contends that the fact that the Respondent gave a wrong address is another element of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Given the Respondent’s failure to file a Response, the Panel accepts as true all reasonable factual allegations of the Complainant. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant.

A. Identical or Confusingly Similar

The Complainant holds among others the trademarks NOVOTEL, IBIS and ACCOR.

The domain names <accorhotelsturkey.com> and <accorhotelsturkiye.com> both contain the Complainant’s trademark ACCOR in its entirety. The mere addition of the term “hotelsturkey” and “hotelsturkiye” respectively are insufficient to avoid any confusion. The terms “hotelsturkey” and “hotelsturkiye” describe the services provided by the Complainant under the ACCOR trademark along with the location in which the Complainant provides the services.

The domain names <ibisturkey.com> and <ibisturkiye.com> both contain the Complainant’s trademark IBIS in its entirety. The mere addition of the term “turkey” and “turkiye” respectively are insufficient to avoid any confusion. The descriptive terms “turkey” and “turkiye” denote a location in which the Complainant provides the services registered under the IBIS trademark.

The domain names <novotelturkey.com> and <novotelturkiye.com> both contain the Complainant’s trademark NOVOTEL in its entirety. The mere addition of the term “turkey” and “turkiye” respectively are insufficient to avoid likely confusion. The descriptive terms “turkey” and “turkiye” denote a location in which the Complainant provides the services registered under the NOVOTEL trademark.

The Panel finds that the six disputed domain names are confusingly similar to the Complainant’s registered trademarks.

The “.com” suffix denoting top-level domain status in the Respondent’s domain names does not affect the determination that the domain names are confusingly similar to the Complainant’s mark pursuant to Policy, Paragraph 4(a)(i).

Therefore the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain names incorporating said marks.

Furthermore, the Respondent has no prior rights or legitimate interest in the domain names. The Respondent has apparently not used the terms “Accor”, “Novotel” or “Ibis” in any way, other than in respect of the domain names at issue, before or after the Complainant started their business.

The Respondent is not known under the name “Accor”, “Novotel” or “Ibis” or any similar term.

Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain names, to which the Resondent has chosen to make no reply, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled. The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The Complainant is a European leader and one of the world’s largest business organizations in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90 countries worldwide. More particularly, The Complainant operates several hotels especially in Europe and specifically in Turkey.

The Complainant has stated, not impossibly, that it seems quite difficult to assume that the Respondent was not aware of the existence of the Complainant at the time it registered the disputed domain names as the very precise combination of the words “Accor with “Hotels” and “Turkey” or “Turkiye”, the words “Novotel” with “Turkey” or “Turkiye” and the words “Ibis” with “Turkey” or “Turkiye” respectively clearly indicate that the Respondent had the Complainant in mind while registering the domain name in dispute.

Given the absence of any other explanation why the Respondent chose to register six domain names containing three of the Complainant’s trademarks, the Panel, in view of the above uncontested facts, finds little difficulty in finding that the disputed domain names have been registered in bad faith.

This finding is supported by the fact that the Respondent has used the disputed domain names to present sponsored links to websites belonging to the Complainant’s competitors, indicating also that the disputed domain names have been used to take advantage of the trademarks ACCOR, NOVOTEL and IBIS by creating the illusion of being affiliated with the Complainant.

It also appears that the Respondent may have registered the disputed domain names in order to make a profit by offering to transfer them for € 40 000, this amount evidently being much higher than the out-of pocket costs of registering and establishing the domain names. It has been established in previous WIPO decisions that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is an evidence of bad faith (DZ Bank AG v. Bentz, WIPO Case No. D2006-0414 and Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372).

In the light of the above, the Panel concludes that the disputed domain names have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 names, <novotelturkey.com>, <novotelturkiye.com>, <accorhotelsturkey.com>, <accorhotelsturkiye.com>, <ibisturkey.com> and <ibisturkiye.com> be transferred to the Complainant.


Jonas Gulliksson
Sole Panelist

Dated: November 7, 2007