WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Enrobit
Case No. D2012-0084
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Amit Amit, Enrobit of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <accormedia.com> (the "Domain Name") is registered with IndiaLinks Web Hosting Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2012. On January 19, 2012, the Center transmitted by email to IndiaLinks Web Hosting Pvt Ltd.. a request for registrar verification in connection with the disputed domain name. On January 20, 2012, IndiaLinks Web Hosting Pvt Ltd. 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” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. Email communications from the Respondent were received on February 7, 2012 and March 8, 2012.
The administrative proceeding was suspended on February 13, 2012 in order for the Complainant and the Respondent to explore a possible settlement. An extension to the period of suspension was granted on March 13, 2012. As no settlement was reached by the Parties, the administrative proceeding was reinstituted on March 27, 2012 and the due date for a Response was extended to April 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2012.
The Center appointed Ian Lowe as the sole panelist in this matter on April 5, 2012. 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.
Although no Response was submitted by the Respondent, the Panel has taken into account the emails received from the Respondent.
4. Factual Background
The Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. Accor has been in business for over 40 years and operates more than 4,200 hotels in 90 countries worldwide. The group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS. The Complainant has a large number of ACCOR trademark registrations throughout the world including India trademark registration number 1591963 in respect of the stylized word ACCOR and device registered as of August 17, 2007 in class 42.
The Complainant operates nine hotels in India – three Novotels, three Mercure and three Ibis. It has 1,431 employees in India.
The Complainant operates websites at “www.accor.com” and “www.accorhotels.com” through which Internet users can find and book hotel rooms. In 2010, the Complainant received the Tourism for Tomorrow Award from the World Travel and Tourism Council recognizing the actions taken by the Accor group in favour of sustainable tourism development.
The Complainant sent a cease and desist letter to the Respondent on August 23, 2011 by email and by registered post asking it to cancel the Domain Name. The letter was not delivered but was returned to the Complainant. No response was received to the original email or to subsequent email reminders.
The Domain Name was registered on July 2, 2011. At the date of the Complaint, the Domain Name did not resolve to any website and has apparently not been used since registration.
5. Parties’ Contentions
A summary of the submissions by the Complainant is as follows:
The Complainant claims rights in respect of the trademark ACCOR for which it has registrations throughout the world, including in India. It submits that the Domain Name is confusingly similar to the mark ACCOR since the Domain Name incorporates the whole of its ACCOR mark together only with the word "media" which does not serve to alleviate any confusion between the Domain Name and the Complainant. Rather it suggests that the Domain Name might refer to a website where official media content regarding the Complainant may be found.
It is submitted by the Complainant that the Domain Name is so identical to its well-known trademark ACCOR that the Respondent cannot reasonably pretend that he was intending to develop a legitimate activity through the Domain Name. The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use the trademark. The Respondent is not commonly known by the name ACCOR and the Respondent has not demonstrated use of or preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute.
Furthermore the Complainant relies on the fact that the Respondent failed to respond to its cease and desist letter and thereby failed to take the opportunity to protest any right or legitimate interest in the Domain Name that he may have had.
The Complainant maintains that it is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name because the Complainant is well-known throughout the world, including in India where the Complainant runs nine hotels and as of June 30, 2011 had 1,431 employees. Furthermore a quick online search before registering the Domain Name would have revealed the existence of the Complainant and its ACCOR trademark. Registration of a domain name incorporating the Complainant's well-known mark and passively holding it since registration is said to establish that the Respondent registered the Domain Name in bad faith.
In addition, the Complainant relies on previous Panel findings, particularly in the Telstra case ( WIPO Case No. D2000-0003, Telstra Corporation v Nuclear Marshmallows) to the effect that in certain situations the Respondent's passive holding of a domain name may nevertheless satisfy the requirement of bad faith use in paragraph 4(a)(iii) of the Policy.
Although the Respondent did not file a Response, in his email to the Center of February 7, 2012 a Mr. Rommel Rodrigues, apparently writing as or on behalf of the Respondent, apologized for his delay in responding to the Complaint. He stated that he had been a journalist for over 20 years based primarily in Mumbai writing on business, commerce and political and current affairs. He was also an established author and was in the process of writing a film loosely based on one of his bestselling books. Since he considered that he was regarded as one of the known media professionals in his country it was logical for him to consider acquiring an appropriate business title and domain name for a media business. He considered appropriate alphabetical combinations and found that accormedia.com was available.
The Respondent further states that prior to registering the Domain Name he made enquiries of the Registrar of Companies in India and discovered that there were companies registered with names beginning "Accor". However, he found on further investigation that these companies were in different businesses than media and therefore considered that his use of the Domain Name would not infringe their line of activities. He did not find any other entity conducting business as Accor Media.
He continued that he had no malicious intent in registering the Domain Name and purely intended it to be used for his legitimate purpose. He indicated that he was (without prejudice) prepared to have the Domain Name deleted or transferred to the Complainant or to do whatever else WIPO felt right to be done to bring the matter to a conclusion, but asked whether an alternative, "decent" domain name could be made available to him.
Following the suspension of these proceedings, in response to an email from the representative of the Complainant asking simply that the Respondent transfer the Domain Name, the Respondent reminded the Complainant that his enquiry about the provision of an alternative domain name had not been addressed and made the point that he did not consider that he had breached any cyber laws in India.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered trade mark rights in a number of jurisdictions including India in respect of the stylized word mark ACCOR and device in which the most prominent element is the word ACCOR. The Domain Name comprises the whole of the mark ACCOR together with the word "media". The Panel does not consider that the word "media" is wholly non-distinguishing on the one hand or that it serves to increase the likelihood of confusion between the mark ACCOR and the Domain Name on the other. It is not obvious why an Internet user when presented with the Domain Name would naturally assume that it was associated with media offerings in respect of the Complainant. Nevertheless, in view of the incorporation of the entirety of the ACCOR mark and the limited distinctiveness of the additional word "media", the Panel finds that the threshold test under paragraph 4(a) of the Policy is met and that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant's stance is that the Domain Name is so similar to its ACCOR mark (which is very well-known in India and elsewhere in the world), that it is inconceivable that the Respondent could have had any legitimate reason to register the Domain Name. The Complainant also notes that the Respondent failed to respond to its cease and desist letter and did not therefore take the opportunity to explain its position and identify its legitimate interests.
The Panel is not, however, convinced by this strident approach in relation to the registration of the Domain Name. First, the Panel notes that the Complainant has not adduced any substantive evidence that the mark ACCOR was in fact well-known in India at the time the Domain Name was registered. In terms of rights, it relies specifically only on an Indian trademark registration for the stylized word mark "accor" and device in Class 42 - that is registered in respect of hotel services and related services including "consultations and consultancy (not related with business affairs)". The Complainant also cites an International Trademark registration for the same mark in a number of classes but that does not and cannot designate India since India is not a party to the Madrid Agreement or Protocol.
None of the Complainant's hotels in India are operated under the ACCOR mark but rather under the NOVOTEL, MERCURE and IBIS brands. In a country with a population the size of India's, the employment of 1,431 people is hardly dramatic.
The Complainant cites a number of earlier decisions under the UDRP in which the Panel appears to have held that ACCOR was a well-known mark. What is striking, however, is that in all those cases, the domain name comprised "accor" together with "hotels" or "hotel" (<accorhotels.ir<; <accorhotels.co>; <accorhotel.net>). Those were therefore cases where a lack of legitimate interests on the part of the Respondent and bad faith registration and use were all the more likely. None of them were concerned with India.
A review by the Panel of more recent UDRP decisions indicates further findings that the ACCOR mark is well or widely known (Accor v. Domainjet, Inc., D2012-0038; Accor v. Paul Hocevar, D2012-0025, Accor v. Above.com Domain Privacy, David Smith / Domain Admin, Huanglitech, D2012-0272 and Accor v. Je Jeong, DCO2010-0040). In these cases also, however, the domain names were more obviously associated with activities carried on by the Complainant (<accoronline.com>; <accorjobs.info<; <accorhotel-asia.com>) and were being used for websites with sponsored links to travel, accommodation or hotel services or (in the case of <accorjobs.info>) for a fraudulent recruitment site.
The Panel does note that the ACCOR mark is in use on the Internet and is readily identifiable in any Google search – so it is certainly conceivable that the Respondent (a journalist) may have come across it when searching for a suitable name. However, the Panel finds it difficult to characterize the use of the name "Accor Media" by the Respondent as obviously illegitimate as such. The Respondent claims that he was looking for a suitable name for a media company and discovered that the Domain Name, <accormedia.com>, was available. In the Panel's view, the use of "media" with the mark ACCOR does not readily suggest the unfair taking advantage of the Complainant's rights in the mark ACCOR since it seems to the Panel entirely possible that the name "Accor Media" could be used by an entity not in fact connected with the Complainant at all. The combination of ACCOR and “media” does for this Panel serve to distinguish the Domain Name from the Complainant's mark sufficiently to give rise to the possibility that a third party could have a legitimate interest in respect of the Domain Name in connection with a business related to media and entirely unconnected with a hotel business such as the Complainant's, especially in India where there is little or no evidence that the ACCOR mark was well-known at the time the Domain Name was registered. The Panel recognizes that the Respondent has not used the Domain Name for such purpose, merely claiming an intention to do so – but the Panel does not find such claim to be inherently implausible in the circumstances.
It is regrettable and surprising that the Respondent did not respond to the Complainant's cease and desist letter to explain his motives for registering the Domain Name and his intentions in relation to it. It is also unclear as to why the Domain Name is registered in the name of Amit Amit, Enrobit yet Rommel Rodrigues responded to the Complaint in an informal email identifying himself as the owner of the Domain Name. He did however put forward an explanation in his email for his registration of the Domain Name and his intended legitimate use of it. In the Panel's view the result is that the Complainant has failed on the balance of probabilities to establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Complainant has failed to establish the second limb of the requirements of paragraph 4(a) of the Policy, it is not strictly necessary to consider the third limb. In light of the Panel's findings in respect of the Respondent's possible rights or legitimate interests in respect of the Domain Name, it is clearly difficult to characterize the registration of the Domain Name as having been in bad faith. So far as use of the Domain Name is concerned, there is no evidence that the Respondent has used it at all. The Complainant relies on the Telstra case to support the proposition that passive use may be sufficient to establish bad faith use. However, the circumstances that led the Panelist in Telstra to conclude that passive holding in that case amounted to bad faith use were that:
(i) the Complainant's trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and other countries;
(ii) the Respondent had provided no evidence whatsoever of any actual or contemplated good faith use of the domain name;
(iii) the Respondent had taken active steps to conceal its identity, by operating under a name that was not a registered business name;
(iv) the Respondent had actively provided and failed to correct false contact details; and
(v) taking into account all the above it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
As the Panel in the current case has indicated above, the Panel is by no means convinced in light of the evidence presented in support of the Complaint that the Complainant's trademark ACCOR does have a strong reputation in India or that it is widely known there. Furthermore, it is possible to conceive a legitimate use of the Domain Name, amounting as it does to a combination of the Complainant's trademark ACCOR and the word "media". The Respondent has at least put forward an account of contemplated good faith use. Although there appears to be some confusion as to the accuracy of the Respondent's contact details, the overall result is that the Complainant would have failed to persuade the Panel that Telstra supported a finding of bad faith passive use in this case.
For all the foregoing reasons, the Complaint is denied.
Dated: April 22, 2012