The Complainant is ACCOR of Evry, France, represented by Dreyfus & associés, France.
The Respondents are Payam Avarane Khorshid Co., and Nextone Media Limited of Shiraz, Fars, Islamic Republic of Iran and London United Kingdom of Great Britain and Northern Ireland. The Registrar has confirmed that the registered owner of the domain name is Payam Avarane Khorshid Co. (the “First Respondent”). However, according to correspondence between the Complainant, the First Respondent and the Second Respondent respectively, the beneficial owner of the Disputed Domain Name is Nextone Media Limited (the “Second Respondent”). Considering that the First Respondent registered the Disputed Domain Name on behalf of the Second Respondent, as part of the services offered by the First Respondent, the Panel will treat the Respondents as one and will refer to them collectively as the Respondents.
The Disputed Domain Name <accorhotels.ir> is registered with IRNIC. The Registration Agreement incorporates the Policy.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 1, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On June 5, 2010, IRNIC transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 8, 2010.
The Center appointed Lana I. Habash as the sole panelist in this matter on July 15, 2010. 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.
The Complainant, Accor is a company incorporated under French Law, and is a leader in Europe and one of the world's largest business organizations in the travel, tourism and corporate services. Accor owns and/or operates about 4,100 hotels in 100 countries worldwide.
In 2010, Accor has received the Tourism for Tomorrow Award from the World Travel & Tourism Council (WTTC) in the Global Tourism Business Award Category. Accor is the owner of several international registrations for the trademark ACCOR, the earliest of which is dated November 10, 1983, as demonstrated in the excerpts of WIPO trademark search results submitted with the Complaint. “Accor Hotels” is also the Complainant's trade name for its hospitality branch. In addition to the trademark registrations, the Complainant owns the domain names <accor.com> and <accorhotels.com>, which is the domain name for the Complainant's hospitality branch.
According to the IRNIC, the Disputed Domain Name <accorhotels.ir> was created on January, 8, 2009, and is held by the First Respondent Payam Avarane Khorshid Co. The Disputed Domain Name <accorhotels.ir> directs to the Complainant's official website “www.accorhotels.com”.
On March 1, 2010, the Complainant sent a cease and desist letter to the first Respondent (Payam Avarane Khorshid Co.) based on its trademark rights, asking the latter to transfer the Disputed Domain Name <accorhotels.ir> to the Complainant.
On March 10, 2010, the First Respondent responded to the cease-and-desist letter explaining that they provide domain registration services and that the domain name belongs to the Second Respondent. Therefore, on March 12, 2010, the Complainant sent a cease and desist letter to the Second Respondent, followed by several reminders. On March 26, 2010 the Second Respondent's lawyer replied to the cease and desist letter explaining that the Second Respondent bought the Domain Name for commercial purposes and proposed to negotiate with the Complainant for the Disputed Domain Name stating that his client (the Second Respondent) “could be open to a purchase agreement with a price that could restore the investment made with the project of the domain name in discussion”.
Considering that the efforts to transfer the Disputed Domain Name amicably failed, the Complainant filed the Complaint naming the two Respondents.
The Complainant contends that the Disputed Domain Name <accorhotels.ir> contains in full the Complainant's trademark ACCOR, which is a well-known trademark worldwide in particular for hotels and restaurants, and is protected by numerous international trademark registrations, the earliest one is dated November 10, 1983. The Complainant contends that the mere addition of the generic word “hotels” in the Disputed Domain Name is not sufficient to distinguish the Disputed Domain Name from the Trademarks of the Complainant.
The Complainant also contends that the mere addition of the generic word “hotels” to the Complainant's trademark only increases the confusion on part of the Internet users considering that it describes the main business of the Complainant. The Disputed Domain Name is also identical to the Complainant's trade name “Accor Hotels”, by which the Complainant is widely known.
Moreover, the Complainant contends that the Disputed Domain Name <accorhotels.ir> is identical to a number of domain names owned and operated by the Complainant including <accor.com>, which was registered on February 23, 1998, and <accorhotels.com>, which was registered on April 30, 1998. The Complainant contends that the addition of the ccTLD “.ir” extension is irrelevant; the Complainant contends that it is well established that the top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant's trademark and the disputed domain name.
The Complainant also contends that by registering the Disputed Domain Name and by redirecting it to the Complainant's official website, the Respondents created a likelihood of confusion with the Complainant's trademark, and that Internet users could think that the domain name <accorhotels.ir> belongs to the Complainant or that the Respondents are associated with the Complainant. The Respondents are not affiliated with the Complainant in any way, nor are they authorized to register and use the Complainant's trademark ACCOR or to seek registration of any domain name incorporating the trademark.
The Complainant further asserts that the term “accor” has no meaning in English and the Respondents do not have any prior rights or legitimate interests in the Disputed Domain Name and the Respondents are not currently known, nor have been known by the name “Accor” or “Accorhotels” or any similar terms; moreover, the fact that the Disputed Domain Name is so identical to the Complainant's trademark ACCOR, it is infeasible for the Respondents to contend that they were intending to develop a legitimate activity. The Respondents have never used the Disputed Domain Name in connection with a bona fide offering of goods or services, and linking the Disputed Domain Name to the Complainant's official website does not constitute a legitimate offering of goods and services.
The fact that the Respondents extended an offer to buy the Disputed Domain Name negates any legitimate interest and that the sole objective of the Respondents choosing the Disputed Domain Name in its entirety, adding “hotels” to it is to benefit from the reputation of the trademark ACCOR.
The Complainant also contends that the Respondents registered and are using the Disputed Domain Name in bad faith, as the Respondents knew or must have known of Complainant's trademarks ACCOR at the time of registration, considering that the trademark ACCOR is known worldwide, particularly combining it with the word “hotels”. The Complainant explains that even if the Respondents could not do a trademark search, a simple Google or any other search engine using the word “accor” and “hotels” shoes that all the first results relate to the Complainant's products or news. The Complainant goes to support its argument by stating that the fact that the Disputed Domain Name points to the official website of the Complainant supports the presumption of knowledge on the part of the Respondents. Finally, the Complainant contends that the Respondents' offer to sell the Disputed Domain Name to the Complainant constitutes use in bad faith, particularly that the Respondents are engaged in such bad faith pattern of conduct, and that directing the Disputed Domain Name to the Complainant's official website constitutes an act of unfair competition or parasitical behavior, and as such the registration of the Disputed Domain Name, incorporating the trademark ACCOR was done with the knowledge of its existence and with the implied intent to take advantage of the trademark.
The Respondents did not reply to the Complainant's contentions.
The Complainant has demonstrated its rights to the trademark ACCOR, as evidenced by the excerpts from the WIPO search presented with the Complaint. The Panel is also satisfied that the Complainant has established that ACCOR is a well-known trademark.
The Disputed Domain Name contains the Complainant's trademark ACCOR in its entirety, with the added generic word “hotels”. The Panel is of the view that the addition of the generic word “hotels” does not detract from the distinctiveness of the dominant part of the disputed Domain Name, to the contrary, in this particular case, it adds to the confusion on part of the Internet users who would associate hotels with the Complainant's trademark, being descriptive of the primary business of the Complainant's and its trade name. In numerous UDRP Decisions, panels have found that the fact that a domain name incorporates a complainant's registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of the Policy (see, Alstom v. FM Laughna,, WIPO Case No. D2007-1736, Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed Domain Name on part of the Respondents. The failure to submit a response by a respondent in some cases supports a finding of lack of such rights. In this case, and according to the statement of facts provided by the Complainant, the Second Respondent's legal counsel alleged in its response to the cease and desist letter that “his client has registered the domain name <accorhotels.ir> for commercial purposes which cannot interfere with the trademark you have indicated”. However the legal counsel did not offer any explanation of such commercial purposes nor did the Respondents respond to the Complaint.
Considering the facts at hand, the Panel finds that the Respondents do not have any rights or legitimate interests in the Disputed Domain Name. The mere registration of a domain name does not give rise to a “legitimate interest” even if such domain name points to the official website of the Complainant's, absent a license agreement or any form of authorization granted to the Respondents by the Complainant. (See Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363). It is evident that the sole objective of the Respondents in registering the Disputed Domain Name is to benefit from the reputation of the trademark ACCOR, as can be fairly inferred from the offer to sell extended by the Second Respondent's legal counsel to the Complainant.
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the trademark ACCOR, therefore it is unlikely that the Respondents were not aware of the proprietary rights of the Complainant in the trademark and subsequently in the Disputed Domain Name; a fact that the Respondents did not contest in any of their communications with the Complainant. Moreover, the fact that the Disputed Domain Name points to the official website of the Complainant supports the presumption of knowledge on part of the Respondents.
In fact, the Second Respondent's proposal to sell the Disputed Domain Name to the Complainant for a price that would restore the investment of the Respondents, which exceeds the out-of-pocket expenses associated with the transfer constitutes a classic case of cybersquatting, and is one of the examples provided by the Policy of such circumstances indicating registration and use in bad faith (see LEGO Juris A/S v. n/a, Domain For Sale, WIPO Case No. D2010-0158, AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. /Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485, Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574, C.Crane Company Inc. v. Roobie Crossley, WIPO Case No. D2009-0815)
“For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondents have registered and are using the Disputed 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, <accorhotels.ir> be transferred to the Complainant.
Lana I. Habash
Dated: July 26, 2010