World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Above.com Domain Privacy/ Belcanto Investment Group

Case No. D2012-1179

1. The Parties

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

The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Belcanto Investment Group of Charlestown, Nevis, Saint Kitts And Nevis.

2. The Domain Name and Registrar

The disputed domain name <mercure-chester-west.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2012. On June 11, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 12, 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 June 13, 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 June 18, 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 June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 10, 2012.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on July 16, 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.

On July 19, 2012, the Respondent submitted to the Center an informal email communication apparently agreeing to and offering the transfer of the disputed domain name. In its email of July 20, 2012, the Complainant indicated its unwillingness to accept the Respondent’s proposal and desire for a decision on the merits of the case.

4. Factual Background

The Complianant is Accor, a French group of companies, a leader in economic and mid-scale hotels, and in upscale and luxury hospitality services, that operates more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, from budget to upscale. The group includes famous hotel chains, such as “Mercure”.

The Complainant’s brands are recognized worldwide and appreciated for the quality of their services. Accor received the “Tourism for Tomorrow Award 2010” from the world Travel and Tourism Council (WTTC). This award recognizes the actions taken by the Accor group to which the Complainant belongs in the world in favor of sustainable tourism development.

The Complainant operates 185 hotels in the United Kingdom of Great Britain and Northern Ireland and, as of December 30, 2011, has more than 5,078 employees in that country. In particular, the Complainant operates 71 Mercure hotels in the United Kingdom, 5 of which in the same area near Chester and 2 in Chester: the “Mercure Chester East Hotel” and the “Mercure Chester North Woodhey House Hotel”.

Moreover, the Complainant operates 166 hotels in Australia, where the privacy shield provider is located and, in particular, 64 “Mercure” hotels.

The Complainant owns and mainly communicates on the Internet through the websites “www.accorhotels.com” and “www.mercure.com” in order to allow Internet users a quick and easy search and booking of its hotels.

Furthermore the Complainant is the owner of the following trademark registrations for MERCURE:

- European Community trademark registration for MERCURE no. 6277032, registered on September 1, 2008, covering services in classes 39, 41, and 43.

- International Trademark registration for MERCURE no. 847330, dated December 13, 2004, covering services in classes 39, 41 and 43.

The Complainant has also registered on April 16, 1996 the domain name <mercure.com> that is used in order to promote its services.

The disputed domain name <mercure-chester-west.com> was registered on December 8, 2011 and according to the evidence submitted by the Complainant it resolves to a parking page displaying sponsored links related to hotels.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the trademark MERCURE, under which it operates several hotels, is a well-known trademark protected worldwide in particular in relation to hotel services.

The renown of the Complainant’s trademark MERCURE was stated by previous UDRP panel decisions.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MERCURE because it incorporates the entirety of the Complainant's trademark; the addition of the geographic terms “Chester” and “west” is not sufficient to distinguish the disputed domain name from the Complainant's MERCURE trademark; similarly the mere addition of the gTLD “.com” is irrelevant because the generic top level domain is not a distinctive element.

The Complainant contends that the Respondent is not affiliated with the Complainant in any way, nor it has been authorized or licensed by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark.

Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MERCURE trademarks preceded the registration of the disputed domain name <mercure-chester-west.com> for years.

Moreover the Respondent did not demonstrate any use or demonstrable preparation to use the domain name in connection with a bone fide offering of goods or services. Indeed, the disputed domain name directs Internet users to a parking page displaying pay-per-click links related to hotels and such use does not constitute a bona fide offering of goods and services. Finally the data of the registrant of the disputed domain name is masked by a privacy shield, which suggests that it has no rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark and hotels at the time of the registration, given the reputation of the Complainant’s trademark MERCURE and the reproduction in the disputed domain name of the MERCURE trademark in its entirety combined with geographic terms “west” and “chester”, where the Complainant operates Mercure hotels. Moreover the data of the registrant of the disputed domain name are masked by a privacy shield, which suggests that it registered the disputed domain name in bad faith by hiding its own identity.

The Respondent’s bad faith use of the disputed domain name is evidenced by the fact that the Respondent is profiting from a domain name which is confusingly similar to another’s trademark or service mark in order to divert web traffic for commercial gain, by using the goodwill built up by the owner of the trademark or service mark. Indeed the Respondent is using the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues for it. Then the Respondent is taking undue advantage from the Complainant’s trademark to generate profits. Moreover the data of the registrant of the disputed domain name is masked by a privacy shield. The use of a privacy shield is not in itself constitutive of bad faith but combined with other elements, it may constitute a factor indicating bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, but in its email communication of July 19, 2012, indicated its apparent consent to the transfer of the disputed domain name to the Complainant.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain name registered by the Respondent 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 registered by the Respondent has been registered and is being used in bad faith.

A. Preliminary Issue – Consent to Transfer

The Panel notes the Respondent’s apparent consent to transfer the disputed domain name in its email of July 19, 2012 and the Complainant’s unwillingness to accept the Respondent’s proposal and its request for a decision on the merits in its July 20, 2012 email.

In light of the lack of Complainant’s agreement to a consent decision, the Panel shall decline to grant the requested transfer remedy solely on the basis of the Respondent’s consent, and shall proceed to a substantive determination on the merits. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.13.)

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <mercure-chester-west.com> is confusingly similar to the Complainant’s MERCURE trademark, a well-known mark in which the Complainant has established rights through registration and extensive use, at least, in connection with the sector of hotels.

The disputed domain name incorporates the Complainant’s MERCURE trademark in its entirety; the only difference is the mere adjunction of the terms chester and west, separated by dashes (“-“).

The addition of the geographical indicator “Chester” (the name of the city in the United Kingdom) and of the generic term “west” is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant’s trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865).

On the contrary, considering that in the area near Chester, the Complainant operates 5 hotels, and operates two Mercure hotels in Chester, the Mercure Chester East Hotel and the Mercure Chester North Woodhey House Hotel, the addition of the terms “Chester” and “west” is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant, being specific to the hotel Mercure in Chester.

The Panel believes that people considering the disputed domain name without awareness of its content may think that the disputed domain name is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Finally, with regards to the suffix “.com” (which indicates that the disputed domain names are registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

Thus, the Panel finds that the disputed domain name <mercure-chester-west.com> is confusingly similar to the Complainant’s trademark.

For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.

The Complainant states that the Respondent is not affiliated with the Complainant in any way, or authorized or licensed to use the MERCURE trademark, or to seek registration of any domain name incorporating said mark.

Furthermore, the use of the disputed domain name can not be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark MERCURE, diverting Internet users to a website where pay-per-click links exist and generate income for the Respondent.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

D. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world, at least in the sector of hotels and holiday business and management. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the disputed domain name. And indeed, the Respondent’s awareness may be inferred by the fact that it registered a domain name incorporating the MERCURE trademark in its entirety with the addition of the geographic terms “west” and “chester”, in the area of which the Complainant operates MERCURE hotels.

As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Furthermore, according with the Complainant’s opinion, also in the Panel’s view, the use of a proxy registration service to avoid disclosing the name and contact details of the real party owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, cited by the Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

Concerning the use in bad faith, the Complainant has proven to the satisfaction of the Panel that the disputed domain name resolves to a web page containing sponsored links to websites where information concerning hotels as well as general touristic and travelling services were offered.

In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s hotels and services and to obtain information about the Complainant’s activity, to another variety of hotels and touristic services by creating a likelihood of confusion with the Complainant’s trademarks and business.

By exploiting the renown of the MERCURE trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites (also offering goods and services of the Complainant’s competitors) and obtaining revenue from the diverted traffic (besides the UDRP decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the disputed domain name <mercure-chester-west.com> was registered and is being used in bad faith.

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 <mercure-chester-west.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: July 20, 2012

 

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