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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Olga Pererva

Case No. D2012-0539

1. The Parties

The Complainant is ACCOR of Paris, of France, represented by Dreyfus & associés, France.

The Respondent is Olga Pererva of Kharkov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <ibislyon.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 16, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 19, 2012, GoDaddy.com LLC. 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 March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. The Response was filed with the Center on April 2, 2012. On April 2, 2012, a Supplemental Filing was received by the Center from the Complainant.

The Center appointed Richard Hill as the sole panelist in this matter on April 12, 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 owns the well-known trademark IBIS, which was registered in 2004.

The disputed domain name was first registered in 2002 to promote a hotel Ibis in Lyon, France, and a website with appropriate content existed until 2011. The disputed domain name was registered to this Respondent on March 16, 2012.

The disputed domain name incorporates the Complainant’s mark together with the geographic descriptor “Lyon”.

The Respondent is using the disputed domain name to redirect Internet users to a website which provides an online booking service allowing Internet users to book hotels of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. For more than 40 years, it has provided customers with expertise acquired in this core business. It operates more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, from economy to upscale. The group includes notable hotel chains such as Pullman, Novotel, Mercure, and Ibis. It operates various websites that include those names in the domain name, including <ibishotels.com>.

The Complainant states that is owns trademarks for those names, including the trademark IBIS. Under that mark, there are more than 900 hotels in 51 countries throughout the world. IBIS is the world class leader in the field of budget hotels. Thus the mark IBIS is well-known around the world.

According to the Complainant, it runs 14 hotels in the city of Lyon, France, which is the second most important French agglomeration.

The Complainant alleges that, at first, the disputed domain name resolved to a parking page displaying sponsored links related to hotels. Later, the disputed domain name redirected Internet users to the website “www.booking.com”, which provides an online booking service allowing Internet users to book hotels of the Complainant’s competitors.

According to the Complainant, the disputed domain name is identical or at least confusingly similar to its mark because the disputed domain name reproduces the Complainant’s trademark in its entirety together with the geographic term “Lyon”. The Complainant cites previous UDRP decisions to support its position.

The Complainant states that 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 domain name in dispute is so similar to the well-known IBIS trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Moreover, the Respondent is not commonly known by the name “IBIS”, in any way affiliated with Complainant, nor authorized or licensed to use the said trademark or to seek registration of any domain names incorporating the said trademark. In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of services. On the contrary, as stated above, the disputed domain name is used to direct Internet users to a site offering links to the Complainant’s competitors.

Thus, says the Complainant, it is established that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant cites previous UDRP decisions to support its position.

According to the Complainant, it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, because the Complainant’s mark is well-known. Further, the use of the disputed domain name suggests that the Respondent was perfectly aware of the Complainant and its trademark because the disputed domain name resolves to a website offering hotel bookings.

The use of the disputed domain names to divert Internet users and to direct them to a webpage providing click through revenues to the Respondent evidences bad faith. Indeed, the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The Complainant cites previous UDRP decisions to support its position.

B. Respondent

The Response is reproduced verbatim below:

The domain name “IBISLYON.COM” registered for personal purposes. The domain name wasn't offered for sale to trade mark owner. IBIS is don’t knowns trade mark in Ukraine. Some companies have similar trade mark and uses ibis like own name or like abbreviation (example http://www.ibis.net.ua/, http://www.ibis.ua/). The domain name don’t used for parking page and have never been redirected to booking.com. Complainant’s showing screenshot of IBISLYON.INFO. The domain name registered by [the Complainant’s counsel] and shows advertising links (Annex 1 and Annex 2). I don't have any relations to the domain name “IBISLYON.INFO”.

Complainant filed registration for the “IBIS HOTELS” mark on 13 May 2004 (Annex 3). I, however, registered the <ibislyon.com> domain name on: 04 July 2002 (Annex 4). Accordingly, registration of the <ibislyon.com> domain name that substantially predates Complainant’s filing and registration of its “IBIS HOTELS” mark precludes a finding of bad faith on the part of Respondent pursuant to Policy 4(a)(iii). See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., WIPO Case No. D2000-0174 (May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

C. Supplemental Filing

The Complainant’s Supplemental Filing is reproduced below:

Respondent stated “the domain name don't used for parking page and have never been redirected to booking.com”. However, the disputed domain name redirected towards the domain name <ibislyon.info> which was subject of another dispute. In this case Complainant sent a cease-and-desist letter to the registrant and this latter cancelled the domain name. Complainant recovered the property of this domain name via a snapback. Registrant was also located in Ukraine. (Annex 35). In the current case, after the cease-and-desist letter was sent, the content of the website was changed and it redirected Internet users on the website <www.booking.com>.

Respondent also claims “I, however, registered the <ibislyon.com> domain name on: July 4, 2002”. This fact is false.

The domain name was registered in 2002 by a hotel Ibis located in Lyon. The domain was registered in the name of this hotel until July 2011 as displayed in the Whois history (Annex 36). Respondent acquired this domain name in August 2011 (Annex 37), probably with a snapback because the hotel did not renew it. In addition, before Respondent acquired this domain name, it directed to the website of the corresponding hotel according to the archive of this domain name (Annex 38).

Previous Panel stated that “While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.” ( WIPO Case No. D2008-1986 Aubert International SAS and Aubert France SA v. Tucows.com Co. – Annex 39).

Therefore, the registration of the trademarks IBIS substantially predates the registration of the domain name by Respondent. Respondent acquired the domain name in bad faith

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name reproduces the Complainant’s trademark in its entirety. This is sufficient to establish confusing similarity in the sense of the Policy, see for example ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800; The Coca Cola Company v. PrivacyProtect.org / Acosta Jose Julian, WIPO Case No. D2010-0335; and RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059.

Further, the adjunction of a geographic term to the Complainant’s trademark IBIS heightens the risk of confusion in consumer’s minds. See for example Accor v. Value-Domain Com, Value Domain, WIPO Case No. D2009-1797; and Accor SA v. Jacoop.org, WIPO Case No. D2007-1257 (“the domain names <ibisturkey.com> and <ibisturkiye.com> both contain the Complainant’s trademark IBIS in its entirety. The mere addition of the term “turkey” and “turkiye” respectively are insufficient to avoid any confusion. The descriptive terms “turkey” and “turkiye” describe the services registered under the IBIS trademark”).

The Panel finds that the Complainant has satisfied its burden of proof under this element of in paragraph 4(a)(i) the Policy.

B. Rights or Legitimate Interests

The Respondent is using the disputed domain name to operate a website that contains links to various commercial websites that compete with the Complainant. Given the confusing similarity in the names, and the fact that the disputed domain name is not a common, generic term, such use does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. See ALPITOUR S.p.A. v. Ali Albloushi, NAF Claim No. FA0701000888651 (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy); see also Meyerson v. Speedy Web, NAF Claim No. FA0704000960409 (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy).

The Panel finds that the Complainant has satisfied its burden of proof under this element of the Policy.

C. Registered and Used in Bad Faith

The Respondent is using the disputed domain name to operate a website that provides links to various websites offering services that compete with the Complainant’s business. The Respondent is profiting from such use through the collection of referral fees for each redirected Internet user. Such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. See Southern Exposure v. Southern Exposure, Inc., NAF Claim No. FA0005000094864 (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

Moreover, as the Complainant correctly notes, the Respondent’s website is such that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. See American University v. Richard Cook, NAF Claim No. FA0311000208629 (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Systems Corporation v. Perot.net, NAF Claim No. FA0007000095312 (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Respondent argues that bad faith registration cannot be found, because it registered the disputed domain name before the Complainant registered its mark. But, as the Complainant correctly points out, it was not the Respondent who first registered the disputed domain name. The first registrant used the disputed domain name to promote a Hotel Ibis in Lyon, France. The Respondent acquired the disputed domain name well after the Complainant registered its mark. This is sufficient to establish that the Respondent registered the disputed domain name in bad faith. See for example Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name”; and Motorola, Inc. vs NewGate Internet, Inc., WIPO Case No. D2000-0079 (“Nor can the respondent claim as a defense that its original acquisition of the disputed domain name from an individual under eighteen years of age was not in bad faith. This may or may not be the case, but this panel need not consider that matter, since the determining factor that this panel must consider is the subsequent acquisition by the respondent of the domain name from CFR on August 11, 1998. Indeed, the language of paragraph 4(b)(i) of the Policy, is clear: ‘the following circumstances ... shall be evidence of the registration and use of a domain name in bad faith: ... 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 ...’ (emphasis added). That is, the mere fact that the respondent subsequently acquired the domain name for the purpose of selling it to Motorola for a sum in excess of costs incurred suffices to establish the bad faith registration and use referred to in paragraph 4(a) of the Policy.”)

The Panel finds that the Complainant has satisfied its burden of proof under this element of the Policy.

7. Decision

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, <ibislyon.com> be transferred to the Complainant.

Richard Hill
Sole Panelist
Dated: April 15, 2012

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