WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Roseny Gomes Santos
Case No. D2012-0224
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Roseny Gomes Santos of Belo Horizonte, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The disputed domain name <hotelmercurebh.com> is registered with Universo Online S/A (UOL).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to Universo Online S/A (UOL) a request for registrar verification in connection with the disputed domain name. On February 13 and February 14, 2012, Universo Online S/A (UOL) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 14, 2012, the Center informed the Parties that the language of the registration agreement for the disputed domain name is Portuguese, and invited the Complainant to either (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, (ii) to submit the Complaint translated into Portuguese; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On February 15, 2012, the Complainant sent an email communication to the Center where it stated that a language of proceedings submission had already been submitted in conjunction with the Complaint. The Respondent neither filed language submissions nor responded to the Complainant’s request.
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 February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed Antonio Millé as the sole panelist in this matter on March 29, 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. Language of Proceedings
The Respondent is located in Brazil, country in which is also based the Registrar. By email communication of February 14, 2012, the Registrar confirmed that the language of the Registration Agreement was Portuguese.
The Complaint was filed in English. On February 14, 2012, The Center invited the parties in both English and Portuguese to submit their comments regarding the language of the proceeding, in particular, that Complainant justifies the reasons for the language of the proceedings to be English, and to include any evidence or arguments in support of this contention that it may wish to put before the administrative panel; or to alternatively translate the Complaint into Portuguese.
On February 15, 2012, the Complainant submitted to the Center the following:
“We confirm that we have already submitted a request for English to be the language of the administrative proceedings and that we have nothing further to add to it.”
The Respondent did not oppose the Complainant’s request, notwithstanding that the Center communicated to the Respondent in both English and Portuguese.
After the Notification of the Complaint on February 21, 2012 (by courier and email, in both English and Portuguese), the Respondent remained silent, and was notified of its default (also in English and Portuguese) on March 14, 2012.
In light of the evidence that the Respondent had notice of the Complaint and the possibility to express objection to the Complainant’s request regarding the language of proceedings, based on paragraph 11(a) of the Rules, the Panel finds adequate grounds in the record before it to accept the Complainant’s request and to proceed in English.
5. Factual Background
The Complainant is one of the world’s leading hotel operators. The Complainant’s online commercial documents and publicity declares that the company is present in 90 countries with more than 4,200 hotels and over 500,000 rooms. The Complainant operates 142 hotels in Brazil, 58 of them with the MERCURE trademark, of which 11 are located in the state of Minas Gerais, and 4 of these 11 in Belo Horizonte City (state and city of the Respondent’s apparent domicile).
The Complainant is the owner of the Community trademark MERCURE and also the registrant of domain names that include this trademark.
When used, the disputed domain name linked to a website where the Panel found a list of hotels that includes fields titled “Hotel Mercure Lourdes” and “Hotel Mercure BH”. When clicking in these fields, the Internet user obtains another general list of hotels. Also at the website was an advertisement titled “Garotas Chocolate” (“Chocolate Girls” in English) accompanied by a button “Sites de Acompanhantes” (“Escort Girl’s Sites” in English). All the rest of the buttons carry the Internet user to non interactive web pages with unfinished text but some erotic images that links to the aforementioned “Escort Girl’s Site”. This “Escort Girl’s Site” has internal pages for each of the announced escort girls, and plenty of feminine nude photos. The internal pages appear to contain contact data and service prices of the correspondent escort girl.
6. Parties’ Contentions
According to the Complainant (which cites UDRP decisions to support its position), the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s trademark, and creates a likelihood of confusion with Complainant’s trademarks.
Further, the Complainant states that the Respondent is not affiliated with the Complainant in any way and does not have authorization to use the Complainant’s trademark or to seek registration of any domain name incorporating said trademark.
The Complainant states that the Respondent is using the disputed domain name to point to a parking page that redirects the Internet user to an active website offering escort girls services in the Belo Horizonte area. Such use tarnishes Complainant’s trademark and is not a legitimate use under the Policy. Consequently, asserts the Complainant, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. The Complainant cites UDRP decisions to conclude that the Respondent has violated the Policy and alleges the fact that the Respondent provides a fake address in their registration data as additional evidence of bad faith.
The Complainant alleges that the use of the disputed domain name suggest that Respondent was perfectly aware of the Complainant and its several hotels and notably of Complainant’s trademark, because the disputed domain name resolves to a parking page were Complainant’s hotels are listed. The Respondent has chosen the disputed domain name with the intent to increase traffic to his own website and take unfair advantage of the Complainant’s reputation.
According to the Complainant’s Complaint, Respondent is aware that MERCURE enjoyed a substantial reputation worldwide and specifically in Brazil and this knowledge, together with the fact that the disputed domain name is connected to a pornographic website, can be seen as an indication that the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <hotelmercurebh.com> comprises to this Panel three textual elements: a) the expression “hotel”; b) the Complainant’s trademark MERCURE; and c) the initials “bh”. The denomination of the gTLD “.com” shall not be taken into account as it is well established in UDRP decisions that the gTLD suffixes are irrelevant for the purposes of assessing identity and confusingly similarity.
The Panel finds that:
- The word “hotel” refers to the commercial activity that the Complainant internationally develops using their trademark. In this way, this word is not an element of differentiation, but operates as a ratification that the word “Mercure” refers to the widely-known hotel chain.
- The word “Mercure” is the exact and complete transcription of the Complainant’s trademark.
- The initials “bh” may be used as a nickname or substitute name of Belo Horizonte City (in Portuguese spelled “Beagá”) similarly to the use of “L.A.” for the United Sates of America city of Los Angeles. Added to the words “hotel” and “Mercure”, the initials seems to the Panel to suggest that the disputed domain name corresponds to the “Hotel Mercure Belo Horizonte Lourdes”, the existence which existence the Panel verified through an Internet search and that is mentioned in one of the fields of the hotel list published in the home page of the Respondent’s website.
On this basis, the Panel finds that the disputed domain name, which includes the Complainant’s trademark, is confusingly similar to the Complainant’s trademark. The addition of the word “hotel” and the initials “bh” does not preclude confusing similarity but on the contrary, contributes to create it.
The Panel finds that the Complainant has met the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes the Complainant’s prima facie argument that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Respondent has not produced any defense or submitted any evidence that could support any rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii) of the UDRP. The Panel has taken into consideration that the Respondent: a) does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services; b) there is no evidence that the Respondent is commonly known by a denomination similar to the Complainant‘s trademark; and c) is making commercial use of the domain name, with intent for commercial gain by means of misleadingly diverting consumers.
The Panel finds that the Complainant has met the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In this case, there are no circumstances that could allow the Panel to consider the registration and use of the disputed domain name in good faith.
The examination of the website accessible using the disputed domain name shows that the Respondent is using the disputed domain name to attract Internet users and redirecting them to a escort girl offering service. As there is no apparent legitimate reason in this Panel’s view for the registration of this domain name without bad faith, and as the Respondent decided not to submit a formal Response, it is appropriate to conclude in these circumstances that the disputed domain name was registered and is used in bad faith.
The Panel finds that the Respondent’s web site presentation of an Belo Horizonte area hotel list is directed to create the initial impression that Internet users have accessed an authentic lodgment information online service and therefore, that the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to (its) 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 (its) web site or location or of a product or service on your web site or location”.
The Panel finds that the Complainant has met the requirement under paragraph 4(a)(iii) of the Policy.
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, <hotelmercurebh.com>, be cancelled.
Dated: April 11, 2012