WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Nick V, ActionStudio
Case No. D2008-0644
1. The Parties
Complainant is ACCOR, of France, represented by Cabinet Dreyfus & associés, France.
Respondent is Nick V, ActionStudio, of Australia.
2. The Domain Name and Registrar
The disputed domain name <accorez.com> is registered with TPP Domains Pty Ltd. dba TPP Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 25, 2008, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the domain name at issue. On April 30, 2008, TPP Domains Pty Ltd. dba TPP Internet 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 May 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The proceedings were suspended on May 20, 2008 till June 19, 2008. The proceedings were reinstituted on June 20, 2008. The due date for Response was accordingly July 3, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on July 4, 2008.
The Center appointed Eduardo Machado as the sole panelist in this matter on July 17, 2008. 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
Complainant is one of the world's largest groups in travel, tourism and corporate services. With more than 170,000 employees, Complainant owns about 4,000 hotels in 90 countries worldwide.
Complainant's group, ACCOR, holds among other trademarks: NOVOTEL, IBIS, SOFITEL and MERCURE.
Complainant owns and mainly communicates on the Internet, inter alia, via the websites “www.accorhotels.com” or “www.accor.com” in order to allow Internet users a quick and easy finding and booking of its hotels.
Complainant has noticed that the disputed domain name <accorez.com> has been registered. A WhoIs Database search revealed that the disputed domain name was registered by Respondent.
The disputed domain name used to direct Internet users to a website providing reservation booking engine for hotels. Nowadays, the website is inactive. Complainant asserts that Respondent has suppressed its content precisely after a cease-and-desist letter was sent to Respondent on October 10, 2007, in order to obtain an amicable transfer of the disputed domain name. Respondent has never answered this letter.
5. Parties' Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Complainant asserts that it is the owner of numerous trademark registrations throughout the world covering the name, ACCOR and some of them especially protected in Australia where Respondent is located, namely:
ACCOR, International Trademark, n° 855531, filed on May 27, 2005, covering products in class 7.
ACCOR, International Trademark + logo, n° 953507, filed on August 16, 2007, covering products and services in classes 9, 16, 35, 36, 41 and 43.
NOVOTEL ACCOR HOTELS, International Trademark + logo, n° 875041, filed on December 9, 2005, covering services in class 43.
ACCOR, International Trademark, n° 480492, filed on November 10, 1983, renewed and covering products and services in classes 5, 8, 9, 11, 18, 21, 24, 25, 28 and 38.
ACCOR, International Trademark n° 727696, filed on December 28, 1999, and covering products and services in classes 16, 39 and 42.
ACCOR, International Trademark, n° 742032, filed on August 25, 2000 and covering services in class 38.
MERCURE ACCOR HOTELS, International Trademark, + logo, n° 847330, filed on December 13, 2004, covering products and services in classes 39, 41 and 43.
Complainant asserts that it operates many domain names reflecting its trademark among which include:
- “www.accorhotels.com” registered on April 30, 1998
- “www.accor.com” registered on February 23, 1998
Complainant contends that the term “ACCOR” is also part of its Company name since September 22, 1983.
Complainant alleges that the disputed domain name <accorez.com> reproduces exactly its trademark ACCOR.
Complainant informs that it owns the booking hotels system called ACCOR RES (where “Res” is the abbreviation of “Reservation”). Complainant asserts that the adjunction of letters “ez” in “accorez.com” maintains a likelihood of confusion in Internet users' minds.
Finally, Complainant concludes that it is obvious that the disputed domain name <accorez.com> is confusingly similar to the numerous trademarks registered by it, and implies a high likelihood of confusion, as a consumer may think that this domain directly refers to Complainant's services.
The Respondent has no rights or legitimate interests in respect to the domain name
Complainant contends that Respondent is not affiliated with Complainant in any way and that it has not authorized Respondent to use and register its trademarks or to seek the registration of any domain names incorporating said trademarks.
Furthermore, Complainant alleges that Respondent has no prior right or legitimate interest in the disputed domain name because numerous trademarks ACCOR preceded the registration of the disputed domain name <accorez.com> by many years.
Complainant alleges that the conduct of Respondent is merely unfair competition, a parasitical behaviour and that Respondent is not making any legitimate non commercial or fair use of the domain name, as the disputed domain name redirected Internet users to a page offering online hotel booking, and now redirects to an inactive page, while Respondent's commercial activity refers to photography.
Furthermore, Complainant asserts that the strict reproduction of the well-known trademark ACCOR constitutes an obvious intent to misleadingly divert Internet consumers.
Complainant affirms that the domain name in dispute reproduces exactly its trademarks, and, because of that, Respondent could not reasonably pretend it was intending to develop a legitimate activity related to hotels. Also, Complainant contends that the adjunction of letters “ez” does not eliminate the likelihood of confusion as the Internet users can think that the domain name refers to Complainant's booking system called ACCOR RES.
The domain name was registered and is being used in bad faith
Regarding registration in bad faith, Complainant asserts that the trademark ACCOR is well-known and cites ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362 regarding the domain name <accordamerica.com>, in which the Trademark ACCOR was recognized as being a well-known mark.
With regard to registration in bad faith, Complainant asserts that Respondent knew or must have known the trademark ACCOR and the system ACCOR RES, at the time the domain name was registered.
Complainant asserts that the term “accorez” does not have any meaning in English and that the pronunciation of “Res” in the word “Reservation” is the same as in “Rez”.
Complainant states that the domain name <accorez.com> was registered on May 11, 2006. It used to direct Internet users to a hotel reservation website. Complainant informs that after it sent a cease-and-desist letter to Respondent, the website became inactive. Complainant argues that this fact has to be taken under consideration by the Panel in the evaluation of Respondent's bad faith. The fact alone of possessing the domain name directing to a page under construction is not sufficient to prove Respondent's bad faith but this element accompanied with other elements can prove bad faith (ACCOR v. Accor International, WIPO Case No. D2005-0336, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Complainant alleges that the fact of registering the domain name directing to an inactive page along with the fact that Respondent directed the site to a page proposing a hotel reservation system and that Respondent has no activity in the field of hotel trade demonstrates Respondent's bad faith.
Regarding use in bad faith, Complainant alleges that Respondent's website directed to a page where a hotel reservation booking system was proposed, which means that Respondent's website was in the same field as Complainant's activity. It shows that Respondent used the disputed domain name in order to attract Internet users for commercial gain. It is only some time after Complainant's cease-and-desist letter that he changed the disputed domain name's direction so the domain name, today, directs to an inactive page.
According to Complainant, it appears that Respondent registered the disputed domain name in order to make profit from its illegitimate registration.
Complainant asserts that Respondent, by registering a domain name corresponding to a famous name that it could not ignore, intentionally attempted to divert Internet users from Complainant's business by creating a likelihood of confusion with Complainant's trademarks. Complainant alleges that this behavior constitutes an evidence of bad faith use and may ruin the Complainant's reputation, by attracting Internet users to a webpage that does not correspond to what they were looking for.
Complainant also alleges that the lack of response to Complainant's cease and desist letters constitutes another evidence of Respondent's bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the domain name <accorez.com> is confusingly similar to the ACCOR marks since the dominant portion of Complainant's registered marks is being reproduced. The disputed domain name differs from Complainant's registered ACCOR mark only in the adjunction of the term “ez” and the adjunction of a gTLD “.com”.
The Panel finds that the adjunction of the term “ez” and the adjunction of a gTLD “.com” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.
Moreover, panel finds that the adjunction of the term “ez” may have the purpose of creating an increased likelihood of confusion with Complainant's service of online reservations, ACORR RES.
The domain name differs from Complainant's registered ACCOR marks in that it contains the term “ez”. Several prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic term like “ez” does not change the overall impression of a mark. “The addition of ‘my' is not sufficient to avoid confusion.” Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).
Finally, it is well established that the mere adjunction of the ccTLD as well as gTLD, such as “.com” or “.net”, are not a distinguishing feature and do not suppress the likelihood of confusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Société des Hôtels Méridiens v. Richard English, WIPO Case No. D2005-0646).
The Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
In fact, Complainant asserts and proves that before Respondent received its cease and desist letter, the disputed domain name resolved to a webpage displaying an online hotel reservation system. This cannot be considered a bona fide offering of goods or services, as it is inserted in the same field of activities of Complainant.
After Respondent received Complainant's cease and desist letter, the disputed domain name started resolving to an unavailable page, as it still does. This can be considered passive holding of the domain names in dispute, as outlined in other WIPO cases (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Banco Bilbao Vizcaya Argentaria, S.A. v. N/A, WIPO Case No. D2003-0996; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name and has not used the domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed and at the time of this decision, the domain names resolved to websites displaying an “unavailable” message.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the circumstances enumerated above establish that Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
There is evidence that Respondent has effectively used the domain name to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant's mark. Before sending Respondent a cease and desist letter, Complainant verified that the disputed domain name resolved to a webpage which offered an online hotel reservation system, that is, the same service offered by Complainant.
It is very unlikely that Respondent, supposedly acting in the same field of activity as Complainant, was not aware of Complainant's famous trademarks.
Trademark registrations of record confirm Complainant's allegations that it had long been using its ACCOR marks and its corresponding domain names when the disputed domain name was registered. The Panel finds persuasive Complainant's allegation that Respondent must have been aware of Complainant's rights in the mark and, further, that Respondent knowingly infringed Complainant's trademark when it registered the disputed domain name.
At the time the Complaint was filed and at the time of this Decision, the domain name resolves to an “unavailable” page, which, according to several prior UDRP decisions, is considered a case of passive holding of the domain name. Prior decisions have ruled that in such cases, the “use” of the domain name in dispute is not essential to establish bad faith, namely where as here, one or more of the criteria enumerated in the Policy paragraph 4(b) is present. As the disputed domain name reproduces Complainant's trademarks in its whole, in the circumstances of this case, in the view of the Panel, there is no conceivable good faith use of it.
Therefore, the Panel finds that Respondent registered and is using the domain name 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 <accorez.com> be transferred to Complainant.
Dated: July 31, 2008