WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Transure Enterprise Ltd/ Above.com Domain Privacy
Case No. D2012-0143
1. The Parties
The Complainant is ACCOR of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Transure Enterprise Ltd of Road Town, Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <ibisbencoolen.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 27, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 30, 2012, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 3, 2012.
The Center verified that the Complaint together with the amended 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 February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2012.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on March 13, 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.
4. Factual Background
The Complainant is a world leader in economic and mid-scale hotels as well as an important player in upscale and luxury hospitality services, in which it is present for more than 40 years. It operates more than 4,200 hotels in 90 countries. The Complainant’s group includes hotel chains such as Pullman, Novotel, Mercure and Ibis.
The trademarks portfolio of the Complainant’s group includes the trademark IBIS. Ibis has more than 900 hotels in 51 countries throughout the world.
One of these lbis hotels, situated in Singapore, bears the name of “lbis Singapore on Bencoolen”.
The aforementioned hotel was the first lbis hotel located in Singapore and it opened in 2009. Moreover, “lbis Singapore on Bencoolen” has been awarded in the 20th TTG Travel Awards 2009 as the "Best Budget Hotel"
The Complainant noticed that the disputed domain name <ibisbencoolen.com> had been registered by the Respondent on July 5, 2011. The disputed domain name resolves to a parking page displaying sponsored links related to hotels in general.
The Complainant sent a cease-and-desist letter and e-mail to the Respondent on August 24, 2011, requesting the cancelation of the disputed domain name. The Complainant sent several reminders in 2011 but the Respondent did not reply.
The Complainant is the owner, among others, of the following trademarks:
• International Trademark Reg. No. 829736 registered on 13 May 2004 protected in numerous countries and covering goods in class 43.
• International Trademark Reg. No. 1097368 registered on September 12, 2011 protected in numerous countries and covering services in classes 35 and 43.
• International Trademark Reg. No. 1079161 registered on February 23, 2011 protected in numerous countries and covering services in class 43.
The Complainant is also the owner, among others, of the following domain names:
<ibishotels.cn> registered on July 16, 2003
<ibishotels.com> registered on May 30, 2001
<ibishotels.us> registered on September 12, 2011
<ibishotels.fr> registered on May 18,2004
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to its IBIS trademark, considering that it reproduces entirely the trademark IBIS. This reproduction of the Complainant's trademark in its entirety is confusingly similar to the Complaint's trademarks despite the addition of the word “bencoolen".
In fact the association of the term "bencoolen" to the trademark IBIS highlights even more the risk of confusion for consumers, because this disputed domain name refers to the hotel Ibis managed by the Complainant in Singapore under the name of “lbis Singapore on Bencoolen” where the wording “bencoolen” refers to the name of the street where the hotel is located in Singapore.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the respondent registered and used the disputed domain name in bad faith.
The Complainant requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. Considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the word Ibis which is identical to the Complainant’s registered trademark IBIS.
It is clear that the disputed domain name incorporates in its entirety the IBIS trademark to which a descriptive geographical location has been added.
The Panel considers that the disputed domain name which incorporates a geographic term with a registered trademark can be considered identical or confusingly similar to the trademark for the purpose of the Policy (See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Four Seasons Hotels Limited v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-0948).
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating the said trademark.
The Respondent has not provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed domain name, or that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Respondent cannot claim that it is unaware of the Complainant’s rights.
The Panel concludes that the Respondent lacks any rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, a panel may find registration and use in bad faith of a disputed domain name where there is evidence that, by using it, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
The actions of the Respondent in redirecting visitors to a competitor’s website will cause confusion to customers as to the source, sponsorship and affiliation of that website.
In particular the use of the disputed domain name suggests that the Respondent was perfectly aware of the Complainant’s trademarks because the dispute domain name resolved to a parking page displaying sponsored links related to hotels. The Respondent's use of the disputed domain name will cause consumers to erroneously believe that the disputed domain name is owned or used by the Complainant.
The Panel therefore finds that the Respondent registered and has used the disputed domain name in bad faith.
The third element of the Policy has, therefore, been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ibisbencoolen.com> be cancelled.
Dated: March 27, 2012