WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Jose Garcia, Jan Cerny, and N/A,Dopici Nasrat
Case No. D2010-0471
1. The Parties
1.1 The Complainant is Accor of Evry, France, represented by Dreyfus & associés, France.
1.2 The Respondents are Jose Garcia of São Paulo, Brazil; Jan Cerny of Veseli nad Moravou, Czech Republic; and N/A, Dopici Nasrat of Vavau, Tonga.
2. The Domain Names and Registrars
2.1 The disputed domain names are <academicaccorhotels.com> and <wwwhotelibis.com> (the “Domain Names”). The <academicaccorhotels.com> Domain Name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD, a registrar based in China (the “Chinese Registrar”). The <wwwhotelibis.com> Domain Name is registered with the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, a registrar based in India (the “Indian Registrar”).
3. Procedural History
3.1 In early March 2010 WhoIs details for the <academicaccorhotels.com> Domain Name recorded the registrant of this Domain Name to be “Privacy--Protect.org”. However, on March 4, 2010, and in response to an email sent by the Complainant’s legal advisers to [ ]@privacyprotect.org, “Privacy Protect” confirmed the underlying owner of the Domain Name to be “Jose Garcia”. WhoIs details for the <wwwhotelibis.com> at that time also recorded Mr. Garcia as the registrant of that Domain Name.
3.2 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in relation to Domain Names on March 26, 2010. Mr. Garcia was identified as the sole Respondent in that Complaint.
3.3 On March 29, 2010, the Center transmitted an email to the Indian Registrar and the Chinese Registrar, asking for registrar verification in connection with the Domain Names. The Chinese Registrar responded on March 30, 2010 confirming that it was the Registrar for the <academicaccorhotels.com> Domain Name. However, it stated that the Domain Name was registered in the name of “Jan Cerny”, giving a poste restante address for that individual in the Czech Republic. It also claimed that the language of the registration agreement was “Slovak”.
3.4 On April 13, 2010, the Center sent a further email to the Registrars asking for registrar verification in relation to the <wwwhotelibis.com> Domain Name. On April 13, 2010 the Indian Registrar responded, with an email that began:
“Apologies for the delay in proceedings; maybe you did not receive our mail”
although the “mail” it referred to was not identified. In the rest of that email, the Indian Registrar claimed that the registrant was:
“N/A, Dopici Nasarat … Fot’ata Island, ask for Mr Nasrat, Vavau”.
Vavau is an island chain in the Kingdom of Tonga.
3.5 On April 21, 2010, the Complainant was informed by email by the Center that the Registrars had provided different registrant details for each of the Domain Names to those provided in the Complainant. It invited the Complainant either (a) to file separate Complaints in relation to the different registrants; or (b) to amend the Complaint to demonstrate why it is contended that the present registrants are the same entity; or (c) to provide the Center with an explanation as to why it is that the Complaint should proceed without the new registrants being named in the Complaint. In the case of the <academicaccorhotels.com> Domain Name, the Center also requested the Complainant to submit a request as to why the proceedings should proceed in English.
3.6 An Amended Complaint was filed by the Complainant on April 29, 2010. In that document the Complainant contended that:
(i) the registration details for the <wwwhotelibis.com> Domain Name changed after the Indian Registrar was first notified of the Complaint;
(ii) the registration details for the <academicaccorhotels.com> Domain Name changed after the Chinese Registrar was first notified of the Complaint;
(iii) such changes in registration details were contrary to paragraph 8(a) of the Policy.
3.7 On May 6, 2010, the Center sent a further email to the Chinese Registrar asking for details of the Slovak language registration agreement. The Chinese Registrar’s response was that it was available at “www.hebeidomains.com/agreement-Slovak.html”.
3.8 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 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2010.
3.9 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 17, 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.
3.10 On June 25, 2010, the Panel took the unusual, but not unprecedented1, step of issuing a procedural order (the “Procedural Order”) directed to both the Chinese and Indian Registrars (but also copied to the parties), informing them that as matters stood the Panel was likely to make comments critical of the Registrars’ conduct in this case and might consequentially invite the Center to bring the matter before ICANN. In particular, it recorded that it appeared to be the case that (a) the Indian Registrar had failed to respond in a timely manner to a request from the Center that it provide registrar verification; and/or (b) both the Registrars had permited changes in registration to take place after proceedings had become pending contrary to paragraph 8(a) of the Policy; and/or (c) that the Chinese Registrar had failed to properly disclose to the Center the correct language of the registration agreement applicable in relation to the <academicaccorhotels.com > Domain Name. Out of procedural fairness to the Registrars it provided them with an opportunity to file submissions in this respect. The Procedural Order also extended the time for the provision of the decision in this matter from Thursday July 1, 2010 to Monday July 5, 2010.
3.11 On July 8, 2010, it came to the Center’s attention that due to an oversight, the Procedural Order had been forwarded to the parties but not the Registrars. Accordingly, the Panel reissued the Procedural Order, giving the Registrars further time to address these issues and extended the time for the provision of the decision in this matter to Monday July 19, 2010.
3.12 The Indian Registrar did not file a supplemental submission pursuant to the Procedural Order, but the Chinese Registrar did do so in the form of an email from its CEO. The Panel addresses the substance of Chinese Registrar’s submission under the heading “Procedural Matters” below.
4. Procedural Matters
A. Multiple Respondents
4.1 For the reasons set out in the procedural history section of this decision, it is first necessary for the Panel to decide whether it is possible for this case to continue in light of the fact that the Domain Names are now registered in two different names.
4.2 The starting point is that normally it is not possible to commence a single UDRP proceeding in relation to domain names registered in the name of more than one person. Paragraph 3(c) of the Rules state that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”, and although this is permissive rather than a proscriptive provision, the intent of the drafters of the Rules seems reasonably clear. So in a case where a complaint is filed against multiple unconnected respondents, a panel may continue that case against one of the respondents and dismiss it against the others (see for example The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132)2.
4.3 However, in considering whether there are multiple respondents, what is important is the identity of the registrants at the date that the complaint became “pending”. The reason for this is that under paragraph 8(a) of the Policy a domain name cannot be transferred “during a pending administrative proceeding” and as a consequence any change in registration details after that date can be disregarded. In the opinion of the Panel and for the reasons given in detail in Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886, a case is pending as soon as it has been “initiated” by a complainant; i.e. when a complaint has been sent to an ADR Provider (see paragraph 3(a) of the Rules). Alternatively, it becomes pending at the very latest when a registrar has been notified of the existence of the complaint.
4.4 Further, if a panel considers that notwithstanding any change in registration details the relevant domain names are in fact controlled by the same person or persons, the proceedings can still continue (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services PVT. LTD., Laksh Internet Solutions Private Limited., Pluto Domain Services Private LTD., Compsys Domain Solutions Private Limited, supra).
4.5 With this in mind the Panel turns to the evidence before it in this case. In respect of each of the Domain Names, they comprise the following documents with the following dates: <academicaccorhotels.com>.
March 4, 2010 - Email from “PrivacyProtect.org” confirming that Mr. Garcia is the underlying registrant of the Domain Name.
March 15, 2010 - INDOM WhoIs printout showing that the Domain Name is registered in name of “Privacy--Protect.org”, the Name Servers for that Domain are NS1.JOSE-GARCIA.INFO and NS2.JOSE-GARCIA.INFO and the Domain Name has an “Updated Date” (presumably taken from the underlying InterNic record) of February 16, 2010. The printout also records an Expiration Date for the Domain Name of December 17, 2010.
March 17, 2010 - Historic Whois Record showing that the Domain Name is registered in the name of “Privacy--Protect.org”.
March 29, 2010 - Full WhoIs printout (both InterNic and the Registrar) showing that the Domain Name is registered in the name of “Privacy--Protect.org” and that the Name Servers for that Domain Name are NS1.JOSE-GARCIA.INFO and NS2.JOSE-GARCIA.INFO. The “Updated Date” on the InterNic record is February 16, 2010.
March 31, 2010 - Historic Whois Record showing the Domain Name registration information has changed and is now registered in the name of “Jan Cerney”.
April 26, 2010 - INDOM WhoIs printout showing that the Domain Name is registered in name of Jan Cerney, the Name Servers for the Domain Name are NS1.JOSE-GARCIA.INFO and NS2.JOSE-GARCIA.INFO and that the “Updated Date” (presumably taken from the underlying InterNic record) is March 30, 2010. The printout records an Expiration Date for the Domain Name of December 17, 2010, <wwwhotelibis.com>.
February 20, 2010 - Historic WhoIs Record showing the domain name is registered in name of Mr. Jose Garcia.
March 15, 2010 – INDOM WhoIs printout showing that the Domain Name is registered in name of Mr Jose Garcia, the Name Servers for that Domain Name are NS1.JOSE-GARCIA.INFO and NS2.JOSE-GARCIA.INFO, and with an “Update Date” (presumably taken from the underlying Internic record) of December 25, 2009. The printout records show an Expiration Date for the Domain Name of January 3, 2011.
March 29, 2010 - Full WhoIs printout (both InterNic and the Registrar) showing that the Domain Name is registered in the name of “PrivacyProtect.org” and that the Name Servers for that Domain Name are NS1.JOSE-GARCIA.INFO and NS2.JOSE-GARCIA.INFO. The “Updated Date” on the InterNic record is December 25, 2009.
April 1, 2010 - Historic Whois Record shows domain name is registered in the name of “PrivacyProtect.org”.
April 21, 2010 - Historic Whois Record shows domain name is registered in the name of “N/A, Dopici Nasrat”.
April 26, 2010 - Full INDOM WhoIs printout showing that the Domain Name is registered in the name of Dopici Nasrat, the Name Server Records are NS1.APHOST.COM and NS2.APHOST.COM and that the “Updated Date” (presumably taken from the underlying Internic record) is March 30, 2010. The printout records an Expiration Date for the Domain Name of January 3, 2011.
4.6 This material would suggest that as at March 15, 2010 one of the Domain Names was registered in the name of Mr. Garcia and although the other Domain Name was registered behind a privacy shield, a few days earlier the operators of that shield had confirmed that Mr. Garcia was the underlying registrant and the name servers used in relation to that Domain Name incorporated Mr. Garcia’s name. Therefore, if this were the only material before the Panel, the Panel would have concluded that it is more likely than not that as at that date (i.e. March 15, 2010) Mr. Garcia was the underlying registrant in relation to both names.
4.7 Further, the Complainant contends that the Expiration Dates recorded for the Domain Names throughout the relevant period did not change. That is said to demonstrate that there was no change in the underlying registrant. The Complainant claims that ordinarily when a domain name is transferred from one registrant to another, it will automatically be renewed for a year, the price of renewal being included in the price of the transfer. So, the argument goes, if there is no change in Expiration Date, then prima facie, there is no change in registrant.
4.8 The Complainant puts forward no independent evidence to support its argument based upon an analysis of Expiration Dates, but prima facie this appears credible and neither the parties nor the Registrars have contended that it is false. In the circumstances, in the absence of any other evidence before the Panel, the Panel would have concluded that as at the date of the provision of the Complaint to the Center, Mr. Garcia was the registrant behind the privacy services that operated in relation to each of the Domain Names, and that on this basis alone the Complaint could validly proceed.
4.9 However, there is a further complication in this case. In particular, the Chinese Registrar’s submission in response to the Procedural Order, where the Registrar stated as follows:
“Privacy--Protect.org is privacy protection for [the Chinese Registrar] [ ]@privacyprotect.org is email of privacy protection for [the Indian Registrar]. So first absurd thing is someone asked for identification registrar where the domain is not registered”.
It then goes on to claim:
“This domain [i.e. <academicaccorhotels.com>] has been pushed into Jan Cerny’s account in February. You can also see that since Feb17th whois was set to Privacy--Protect.org”.
Finally, it contends in response to the suggestion that there has been a breach by it of paragraph 8(a) of the Policy:
“This is NOT TRUE! on 17.3. the domain was under privacy protection
After notice about UDRP we took privacy away and revealed real owner
This is standard policy applied by every registrar offering privacy protection services. So let me reiterate: we have NOT changed registration details after notification of complaint, we have just took privacy away which is standard procedure everywhere.”
4.10 So ultimately the Panel is faced with conflicting evidence on this issue that it simply cannot reconcile. There is unequivocal evidence that in mid March 2009 “PrivacyProtect.org” was providing information regarding the underlying registrant of the <academicaccorhotels.com> Domain Name, but also an unequivocal assertion by the Chinese Registrar that this information was wrong and that “PrivacyProtect.org” were not responsible for this Domain Name. Further, the Indian Registrar has not offered any explanation as to what is happening. Something is clearly amiss but what is going on here is far from clear.
4.11 However, the Panel does not need to come to a definitive conclusion on this issue. The reason for this is that regardless who was the “registrant” recorded behind each of the privacy services the Panel has reached the conclusion that both of these Domain Names are de facto controlled by the same person. The reasons for this are as follows:
(i) Once again there is the Complainant’s point that the Expiration Dates for the Domain Names had not changed, as would ordinarily be expected if there had been a bona fide transfer to a third party.
(ii) The change in registration details at about the time that this Complaint was raised does not strike the Panel as coincidental. Letters before action were sent to the registrant before the Complaint was issued. The obvious inference in the absence of evidence to the contrary is that this is a case of cyberflight in an attempt to frustrate these proceedings.
(iii) If there had been a genuine sale to independent third parties the fact that this sale was triggered by the Complainant’s letters would not permit a joint Complaint. But for the reasons given below, there is no evidence to suggest that this is the case. This is not a case where two separate respondents have attempted to participate in these proceedings. If these were genuine arms- length sales, one might have expected at least one of the “new registrants” to do so.
(iv) The <academicaccorhotels.com> Domain Name after the purported change in registrant has continued to be operated through Name Servers that incorporate the name of Mr. Garcia.
(v) There has been no marked change in the way that the Domain Names have operated before and after the change in registrants (contrast this with the position in The Cartoon Network LP, LLLP v. Mike Morgan, case supra). They have continued through out to be used in connection with domain name parking or pay per click services.
4.12 This is sufficient to permit these proceedings to continue in respect of both Domain Names.
4.13 That finally brings the Panel to the question of the language of these proceedings. The proceedings have been commenced in English but at one stage the Chinese Registrar indicated that the registration agreement in place in relation to the <academicaccorhotels.com> Domain Name was in the Slovak language. The significance of this is paragraph that 11 of the Rules provides that the:
“language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
4.14 The Panel is sceptical for the reasons given under the heading “Registrars’ Conduct” below that any agreement with “Mr. Jan Cerney” was in Slovakian. However, the Panel has already found as a matter of fact for the purposes of these proceedings that even if there was any transfer of the <academicaccorhotels.com> Domain Name, it remained under the control of the same entity as controlled the <wwwhotelibis.com> Domain Name and there is no dispute that the language of the registration agreement for the <wwwhotelibis.com> Domain Name is English. Further for the reasons that are explained in greater detail under the heading “Registrar’s Conduct” below, the Panel does not consider it fair that the Complainant should be forced to translate its documents into Slovakian in circumstances, where it had no reasonable way of ascertaining in advance of these proceedings that the Slovakian language applied, and where (as here) such translation could incur unnecessary delay and costs. In the circumstances, the Panel determines, as it is empowered under paragraph 11 of the Rules, that regardless of the language of the registration agreement that applies to the <academicaccorhotels.com> Domain Name, the language of these proceedings should be English.
B. Registrars’ Conduct
4.15 There are a number of troubling aspects of the Registrars’ conduct in this case. First, there is the possibility that the Registrars through negligence or design permitted the registration details in relation to the Domain Names to change after proceedings became pending. If this is the case, the Registrars would have acted (or at least allowed the Respondent to act) in breach of paragraph 8(a) of the Policy (which they are obliged to comply with under paragraph 3.8 of the Registration Accreditation Agreement in place between ICANN and the Registrars). The Chinese Registrar has denied that this is the case but worryingly, the Indian Registrar has not attempted to do so.
4.16 Second, there is the conduct of the Indian Registrar in taking 15 days to respond to the Center’s verification request. Any such delay in responding to a verification request simply plays into the hands of cybersquatters, particularly if the cybersquatter is using the domain name(s) concerned for the purposes of pay per click advertising. A delay of 15 days is also difficult to reconcile in any sensible fashion with the three day deadline placed upon a dispute resolution service provider such as the Center, under paragraph 4 of the Rules. Further, the Panel also notes that ICANN’s Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution Complaint of December 2008 suggests that registrars should provide the relevant information within two days.
4.17 The Indian Registrar has not attempted to explain or excuse that delay or explain why when it finally responded to the request it purported to refer to another “mail” to the Center in circumstances where no earlier “mail” had been apparently sent.
4.18 Third, there is the Chinese Registrar’s claim that the language of the registration agreement in place between it and “Mr. Cerney” was the Slovak language. When asked by the Center to substantiate that assertion and identify the relevant agreement on the website, the Registrar provided a link.
4.19 The Panel is unconvinced that the document to be found at that link is indeed the registration agreement that applied to the Domain Name. In short, the purported Slovak language agreement provided by the Chinese Registrar is not what one would expect of a properly drafted Domain Name Registration Agreement. If translated using automated software into English (and even allowing for the limitations of such software) the agreement is virtually unintelligible. By way of example clause 3 of the Agreement reads as follows:
"3. PRÁVA materského
Materská a poskytovatel(ov služieb, podl(a vlastného uváženia, výslovne vyhradzuje právo zmrazit(, mazat(, pozastavit(, zamietnut(, zrušit(, zmenit(, prevziat( vlastníctvo alebo prevodu akejkol(vek domény vyhlášky, aby boli v súlade s akýmikol(vek platnými zásadami a spor, žiadosti orgánov c(inných v trestnom , alebo v súlade s príkazmi súdu, alebo ak rodic(ia alebo poskytovatel(ov služieb v ich jediným uváženia rozhodnút(, že informácie spojené s Domain Order sú nepresné, alebo bola zmenená s, alebo už boli zmenené without povolenie, alebo ak Parent alebo poskytovatel(a služieb podl(a vlastného uváženia rozhodnút(, že doména Objednat( vlastníctva by mala patrit( inému subjektu, alebo ak zákazník / Zákazník / Žiadatel(a nie je v súlade so všetkými platnými podmienkami, normy zásady, postupy a prax stanovené Parent, poskytovatelia služieb, ICANN , tajomníka a Registry Operator. Zákazník súhlasí s tým, že rodic(ia a poskytovatelia služieb, a dodávatelia, zamestnanci, riaditelia, úradníci, zástupcovia, agentmi a pridružené spoloc(nosti, medzi rodic(mi a poskytovatel(ov služieb, ktorí neruc(í za straty alebo škody, ktoré môžu viest( z niektorého z vyššie uvedených."
4.20 It also seems inherently improbable that a Chinese registrar would choose the Slovak language as the language of a contract between it and its registrants.
4.21 The explanation offered by the Chinese Registrar in this respect is as follows:
“Mr. Cerny opened account with us last year and asked for agreement either in Czech or Slovak because he can understand both languages. Since we already had translation in Slovak for another customer, he signed under Slovak language agreement.”
“As a small registrar with handful of selected customers, most of which knows and trust each other, we do not need some complicated agreement but only a simple one. Probably hard to imagine for an American lawyer people might do business based on trust and handshake...we do lots of business not only domain and everything is based on trust, the only contracts our company had to sign were...with American companies”.
4.22 However, the Chinese Registrar did not provide a copy of the “signed agreement”. Further, the problem is not any agreement’s simplicity but whether it is intelligible as a Domain Name Registration Agreement at all. Ultimately, the Panel is left with the impression that the Registrar is operating without a proper agreement in place with this particular registrant and/or if there is an agreement in place then it would appear that the choice of language of the agreement takes precedence over its intelligibility. If that is so, it is difficult to escape the conclusion that what is important to the Registrar and registrant is not an agreement that defines their obligations to one another but an agreement that defines the language that will apply in any UDRP proceedings.
4.23 Further, if a registrar’s modus operandi is to enter into agreements in an ad hoc fashion with its registrants and not to publically make it clear in advance of proceedings what language agreements are in place in relation to which of its domain names, prospective complainants are placed in an extremely difficult position. They have no way of determining what language applies to proceedings in advance of those proceedings being launched and unless they are confident that they can persuade a panel to hold that the language of the complaint shall continue to be the language of the proceedings, then they may face significant last minute translation costs that may make the continuance of that complaint prohibitively expensive. In short, it is a system that whether by accident or design can unfairly impose unanticipated additional costs on a complainant and that thereby potentially frustrates the proper operation of the Policy.
4.24 As this Panel recorded in Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, supra:
“6.21 ... Panels ... have no power to impose any form of sanction on a registrar even in the face of the most egregious misconduct. The only positive powers specifically granted to panels are to decide the fate of domain names the subject matter of proceedings under the Policy and under paragraph 10 of the Rules to conduct those proceedings in such manner as they consider appropriate in accordance with the Policy and Rules. Registrar compliance is ultimately a matter for ICANN.
6.22 - Nevertheless, both panels and the Center have a clear interest in the effective operation of the Policy that they administer. Should it come to their attention that the actions of specific registrars threaten the integrity of the Policy (regardless of whether or not those actions may ultimately be in breach of its terms), it is appropriate for them to bring this to ICANN’s attention. Insofar as a panel requires the authority of the Policy or Rules to do this, paragraph 10 of the Rules provides it.”
4.25 Accordingly, the Panel invites the Center to bring a copy of this decision to the attention of ICANN to take such investigation and action in relation to the Registrar(s) as ICANN considers appropriate.
5. Factual Background
5.1 The Complainant is a business that owns over 4,000 hotels in 100 countries which it operates under various brands. One of these brands is IBIS which is a “hotel economy chain”. In 2009 there were 831 IBIS hotels in 42 countries.
5.2 “Academie Accor” is the name that the Complaint uses for its “corporate university” that engages in employee training. The exact date it opened is unclear but it was “renovated “in 2001 and therefore has operated from at least this date.
5.3 The Complainant owns various trade marks around the world that incorporate or comprise the terms IBIS and ACCOR. They include:
(i) International (i.e. Madrid Agreement and Protocol) trade mark No. 541432 filed on July 17, 1989 in classes 38, 39 and 42 for the word IBIS;
(ii) International (i.e. Madrid Agreement and Protocol) trade mark No. 431254 filed on June 17, 1977 in classes 8, 16, 20, 21, 39 and 42 for the words HOTEL IBIS;
(iii) International (i.e. Madrid Agreement and Protocol) trade mark No. 480492 filed on November 10, 1983 in classes 16. 39 and 42 for the word ACCOR;
(iv) International (i.e. Madrid Agreement and Protocol) trade mark No. 537520 filed on March 28, 1989 in classes 5. 8, 9, 11, 18, 21, 24, 25, 28 and 37 for the word ACCOR; and
(v) International (i.e. Madrid Agreement and Protocol) trade mark No. 742032 filed on August 25, 2000 in class 38 for the word ACCOR;.
Each of these various International marks designates, and appears to be valid in, various countries.
5.4 The Complainant operates its businesses from various domain names. They include <ibishotel.com>, <hotelibis.com>, <accorhotels.com> and <academieaccor.com>.
5.5 According to the WhoIs information available for the Domain Names, the <wwwhotelibis.com> Domain Name was first registered on January 3, 2009 and the <academicaaccorhotels.com> was first registered on December 17, 2009.
5.6 The Complainant’s lawyers first sent a letter to the registrant of the <wwwhotelibis.com> Domain Name on March 11, 2009. In that letter the Complainant claimed, inter alia, that the registrant’s acts involved trade mark infringement and that the Domain Name had been registered and used in bad faith. Further emails and letters were sent thereafter. The Complainant received no response to any of these communications.
5.7 Prior to this complaint the Domain Names have been used in connection with the display of web pages that have the appearance of being generated by “pay per click” or “domain name parking” services. For example, as at March 4, 2010 the web page operating from the <wwwhotelibis.com> Domain Name displayed the sponsored links “Best Hotel Discounts - Up to 75%”, “Hotels”, “Hotel Ibis”, “Looking for Hotel Ibis?”, and “hotel ibis”.
5.8 The Domain Names are still being used in connection with “pay per click” or “domain name parking” services as at the date of this decision.
6. Parties’ Contentions
6.1 The Complainant contends that the Domain Name <wwwhotelibis.com> is “highly similar” to its HOTEL IBIS mark and the Domain Name <academicaccorhotels> “strongly imitates” the trade mark ACADEMIE ACCOR. It, therefore, contends that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights.
6.2 The Complainant contends that the Respondent is not affiliated with the Complainant in any way and that the Respondent has not been authorised by the Complainant to use the Complainant’s marks. It also asserts that the “Respondent does not appear to be well-known under the name ACCOR, ACCOR HOTELS or IBIS HOTEL”. It claims that there is in this case “an obvious intent to divert Internet users” and the “only reason” why the Respondent has registered and used the Domain Names is to “benefit from the reputation of the ACCOR and IBIS trademarks and to ride on their goodwill” to generate pay per click revenue. This is said not to be a bona fide offering of goods and services. Accordingly, it maintains that the Respondent has no rights of legitimate interests within the meaning of the Policy.
6.3 On the issue of bad faith registration and use, the Complainant contends that “it seems obvious that [the] Respondent knew or must have known [the] Complainant’s trademarks at the time he registered the [D]omain [N]ames”. It refers to the fact that the Domain Names contain two different marks of the Complaint and claims that this cannot be pure coincidence. It also cites a previous case involving the Complainant (i.e. Accor v. This Domain Name May be for Sale or Lease, WIPO Case No. D2008-0429) in which the panel concluded that the marks ACCOR and IBIS “are so widely known for hotels that it is inconceivable that the Respondent might have registered these marks without knowing of them”. It also claims that each of the Domain Names embody instances of typosquatting and also relies upon the fact that the Respondent has used a privacy service in an attempt to hide the Respondent’s identity. It also repeats its claims that the Domain Names have been registered and are being used to generate “pay-per-click” revenue by riding off the goodwill inherent in the Complainant’s marks.
6.4 The Complainant seeks transfer of the <wwwhotelibis.com> Domain Name, but asks that the <academicaccorhotels.com> Domain Name be cancelled.
6.5 No person or entity has come forward and either identified itself as the registrant of either of the Domain Name and no Response has been filed.
7. Discussion and Findings
7.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
7.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
7.4 The Panel will address the three aspects of the Policy listed above in turn.
A. Identical or Confusingly Similar
7.5 The Panel accepts that the <wwwhotelibis.com> Domain Name can only be sensibly understood as the words “hotel” and “ibis” in conjunction with the letters “www” and the “.com” TLD. The addition of the letters “www” (which appears to be a reference to the initials representing the “world wide web” commonly placed before a domain name in a URL or Internet address), and the addition of the TLD does not significantly detract from the “hotel ibis” element of the Domain Name. In the circumstances, it is confusingly similar to the HOTEL IBIS mark owned by the Complainant.
7.6 The Domain Name <academicaccorhotels.com> is slightly more difficult to interpret, but the Panel accepts that a sensible reading (and perhaps by far the most sensible reading) of this Domain Name is as the words “academic” “accor” and “hotels” in combination with the “.com” TLD. The Complainant contends that this Domain Name is confusing similar to its ACADEMIE ACCOR mark. Although, the Panel is quite satisfied that the Complainant does use the term “Academie Accor” in connection with its business, there is a difficulty here in that the Complainant does not point to any specific trade mark that takes that form.
7.7 The Complainant is, however, the owner of several registered trade marks for the word ACCOR alone and it asserts in its Complaint that “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered mark” (citing AT&T Corp v. William Gormally, WIPO Case No. D2005-0758). Whilst this is not invariable the case, the Panel accepts that this “may” be sufficient and that in many, and probably most, cases it will be. As this Panel stated in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227:
“6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7 It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
6.9 It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names <theatre.com> or (to adopt American spelling) <theater.com> really confusingly similar to a mark for the word “heat”? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
7.8 In the present case, the Panel finds that the Complainant has crossed the necessary threshold. The additional words “academic” and “hotels” do not sufficiently detract from the term “accor” to prevent a finding of confusing similarity. This is particularly so given that the classes in which the Complainant’s ACCOR marks are registered include those that are hotel related.
7.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy in relation to both of the Domain Names.
B. Rights or Legitimate Interests
7.10 The Panel accepts that the Domain Names were registered by the Respondent for use with a “domain name parking” or “pay-per-click” service with a view to generating “pay-per-click” revenue”. It is possible, in certain circunstances, for use of a domain name for such a purpose to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a trademark in which a third party complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
7.11 Essentially, therefore, in a case such as this the assessment boils down to the question: has the Respondent registered and used the Domain Names with the Complainant’s marks in mind with a view to take unfair advantage of the reputation of those marks? This is precisely the question that has to be addressed in assessing the question of bad faith registration and use. In this case, the Complainant has made a prima facie case that the Domain Names were, in fact, registered by the Respondent to target their marks, and that the Respondent has no other basis on which to demonstrate rights or legitimate interests. As discussed above, the Respondent has filed no Response in the matter.
7.12 For the reasons that are explained in greater detail under the heading of bad faith, the Panel has unequivocally reached the conclusion that in this case the answer to this questions is yes. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in either of the Domain Names and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.13 It is clear that the Domain Names are currently, and have been, used for a “pay-per-click” or “domain name parking” service.
7.14 It is now well-known how these sorts of service operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
7.15 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to the mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, the Express Scripts, Inc. v. Windgather Investments Ltd, case supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the “pay-per-click” site that it then becomes clear that the website is unconnected with the trade mark holder.
7.16 There is little doubt in the mind of the Panel that it was for this sort of illegitimate purpose that each of the Domain Names were registered. There are a large number of factors that point in that direction including, the reputation of the Complainant’s marks, the form of the links that appeared on the “pay-per-click” pages, the Respondent’s failure to respond to the letters of the Complainant’s lawyers, the use of privacy services and the attempts to engage in cyberflight at the time that the proceedings became pending. But by far and away the most compelling factor that points to conclusions of bad faith registration and use, is the nature of the Domain Names themselves.
7.17 In the case of the <wwwhotelibis.com> Domain Name there is the fact that this comprises the Complainant’s own <hotelibis.com> domain name with the letters “www” added. This is a clear case of typosquatting where the registrant has taken the domain name of another, which includes that party’s registered mark, and added the letters “www” frequently used in Internet addresses, in the hope that someone might in error omit the full stop placed between those letters and the domain name. In that way the registrant intends to draw Internet users to the registrant’s site.
7.18 In the case of the <academicaccorhotels.com> Domain Name, the registrant’s actions are perhaps not quite so blatent, but the Respondent’s intent remains clear. The use of the term “hotels” in the Domain Name is particularly telling. It is simply not credible that someone would combine the terms “accor” and “hotels” in a domain name, without knowledge of the Complainant’s ACCOR mark and activities in the hotel sector. The Panel also accepts that the most likely explanation of the addition of the word “academic” in the Domain Name, is as an allusion to the “Academie Accor” run by the Complainant. It is also possible (although whether this is actually the case does not really matter) that this was yet another attempt at typosquatting by the Respondent by reference to the Complainant’s <academieaccor.com> domain name. Again, the only sensible conclusion is that the Domain Name was registered with a view to creating initial interest confusion with the Complainant’s mark so as to draw Internet users to the registrant’s site.
7.19 In the circumstances, the Complainant has in respect of each of the Domain Names also made out the requirements of paragraph 4(a)(iii) of the Policy.
8.1 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 <wwwhotelibis.com> be transferred to the Complainant and that the <academicaccorhotels.com> domain name be cancelled.
Matthew S. Harris
Dated: July 16, 2010
1 See Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; Aluship Technology SP. Z O.O. v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028; Western Union Holdings, Inc., v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, . WIPO Case No. D2008-1675; and Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, WIPO Case No. D2009-1657.
2 With respect to consolidation of multiple domain names and respondents under the Policy, where there is an element of connection and common control, see also the learned panellist discussion in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281