WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Brad Jones

Case No. D2013-1736

1. The Parties

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

The Respondent is Brad Jones of Boulder, Colorado, United States of America.

2. The Domain Names and Registrar

The disputed domain names <suitenovotelparisportedemontreuil.com> and <mercuremadridsantodomingo.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2013, the Registrar 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 October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2013.

The Center appointed Christian Schalk as the sole panelist in this matter on November 6, 2013. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules. The language of the proceedings is English.

4. Factual Background

The Complainant is a leading provider of low budget and mid-scale hotels as well as a major player in upscale and luxury hospitality services. The Complainant is active for more than 45 years and operates over 439,000 rooms in more than 3,400 hotels in 92 countries. The Complainant has hotels also in the U.S., where the Respondent lives. The Complainant operates several hotels under the trademark SUITE NOVOTEL and MERCURE. In Paris, the Complainant owns among other hotels the four stars hotel “Suite Novotel Paris Porte de Montreuil” and in Madrid the “Mercure Madrid Santo Domingo” hotel. The Complainant received the Tourism for Tomorrow Award from the world Travel and Tourism Council in 2010.

The Complainant’s trademark portfolio contains among others the following trademark rights:

- International Trademark registration No. 1039192 for the word and device mark SUITE NOVOTEL of April 20, 2010, covering goods and services in the International Classes 35 and 43;

- International Trademark registration No. 847330 for the word and device mark MERCURE of December 13, 2004, covering goods and services in the International Classes 39, 41 and 43.

Previous UDRP panels have considered these trademarks as well-known. See, for instance, ACCOR v. Domain ID Shield Service Co., Limited / Mr. Sakol Yoowiwat, WIPO Case No. D2012-0018; Accor v. Above.com Domain Privacy/ Belcanto Investment Group, WIPO Case No. D2012-1179 and ACCOR v. GBT, WIPO Case No. D2005-0809.

The Complainant owns also several domain names reflecting its trademarks, for instance,

- <mercure.com>, registered on April 16, 1996;

- <novotel.com>, registered on April 10,1997;

- <hotel-mercure.net>, registered on May 21, 2003;

- <suitenovotel.com>, registered on March 18, 2010.

The Respondent registered the disputed domain name <suitenovotelparisportedemontreuil.com> on March 25, 2013 and the disputed domain name <mercuremadridsantodomingo.com> on April 10, 2013.

The website to which the disputed domain name <mercuremadridsantodomingo.com> resolves, contains information on the hotel Mercure Madrid Santo Domingo in Madrid, its surroundings and nearby attractions. Furthermore, it displays also the link “Hoteles En Madrid” which apparently provides also links to other hotels in this city. In addition there is also an advertisement for the booking platform “airbnb” where it is written “Madrid is waiting for you. Booking a unique space. airbnb”.

The disputed domain name <suitenovotelparisportedemontreuil.com> resolves to a website with a very similar design. This website contains information on the hotel Suite Novotel Paris Porte de Montreuil in Paris. Furthermore, it displays the links “Cheap Hotel in Paris”, “Compare cheap Hotel rates” and “5 star Hotel Paris”.

After the Complainant became aware of the registration of the disputed domain names by the Respondent, it sent a cease and desist letter via registered letter and e-mail to the Respondent on July 9, 2013. Despite several reminders on July 16, 2013, July 23, 2013 and July 31, 2013, the Respondent never replied. Furthermore, the registered letter returned to the sender because the Respondent was not found under the address mentioned in the Whois database.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are confusingly similar to the trademarks and service marks SUITE NOVOTEL and MERCURE to which the Complainant has rights. The Complainant argues that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant refers in this context to The Coca Cola company v. PrivacyProtect.org / Acosta Jose Julian, WIPO Case No. D2010-0335 and RapidShare AG, Christian Schmidt v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059. The Complainant explains further that this is also the case irrespective of the adjunction of generic or geographical terms and that the association of the geographical terms “Paris Porte de Montreuil” and “Madrid” reinforces the likelihood of confusion because the disputed domain names refer to the “Suite Novotel Paris Porte de Montreuil” Hotel and to the “Mercure Madrid Santo Domingo” Hotel which are both owned and operated by the Complainant. In order to support its arguments, the Complainant cites Sanofi-Aventis, Aventis Inc., Aventis IIInc. V. Yur Bar, WIPO Case No. D2010-0663; Montage Hotel&Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042 and Carlsberg A/S v. Personal/decohouse, decohouse, WIPO Case No. D2011-0972.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondent is not affiliated with the Complainant nor has it been authorized by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating the Complainant’s trademarks. The Complainant contends also that the Respondent has not been commonly known by the names “Suite Novotel” or “Mercure”.

Furthermore, the Complainant believes that the Respondent did not demonstrate use of or preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods and services. The Complainant explains in this context, that the disputed domain names resolve to a website containing a non-official presentation of the Complainant’s hotel including a defective online reservation service partly concealed by commercial ads, a description of the Complainant’s respective hotels found in Paris and Madrid as well as some commercial links. The Complainant concludes that it was the Respondent’s intention to abusively benefit from the Complainant’s reputation and particularly from the Complainant’s trademarks SUITE NOVOTEL and MERCURE to obtain commercial gains for the proposed fake online booking system and commercial links. These links refer to pay-per-click parking page links which only purpose is to generate revenues. The Complainant states further that the Respondent is not accurately disclosing its relationship with the trademarks by falsely suggesting that the websites to which the disputed domain names resolve are the Complainant’s official websites.

Another indication that the Respondent’s behavior cannot be regarded as legitimate is that the Respondent did not reply to the cease and desist letters of the Complainant and that he provided false contact details which made communication between the Complainant and him impossible.

The Complainant alleges furthermore, that the disputed domain names were registered and are being used in bad faith. The Complainant argues that given the International reputation of the Complainant’s trademarks NOVOTEL and MERCURE (see ACCOR v. Domain ID Shield Service Co., Limited / Mr. Sakol Yoowiwat, WIPO Case No. D2012-0018; Accor v. Value-Domain, Inc, WIPO Case No. D2012-1179 and Accor v. Above.com Domain Privacy/Belcanto Investment Group, WIPO Case No. D2012-1342) and the fact that the disputed domain names contain the names of two particular hotels of the Complainant, the Respondent must have been aware of the Complainant and its trademarks. The Complainant believes that already a quick trademark search or a search for the terms “Suite Novotel” and “Mercure” in search engines such as Google would have revealed to the Respondent the existence of the Complainant and its trademarks. In this context, the Complainant refers to decisions where the panel found that there is bad faith registration where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Complainant cites here LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303 to support its arguments.

Moreover, the Complainant asserts that the Respondent also used the disputed domain names in bad faith. The Complainant believes that the Respondent directed them to a website containing a non-official presentation of the Complainant’s hotels including a defective online reservation service partly concealed by commercial ads, a description of the respective hotels of the Complainant as well as some commercial links. Given the very realistic description of the Complainant’s hotels on the Respondent website, the Complainant is convinced that the Respondent did everything to make his websites look like the Complainant’s official website and therefore, created a strong likelihood of confusion for potential clients of the Complainant who believe that the disputed domain names resolve to official websites offering authentic online services. Internet users could reasonably believe that, in some way, the disputed domain names are linked to the Complainant and associate the hotel reservations to the Complainant’s offers or suggestions for its customers. The Complainant maintains further that these websites contain also commercial links leading to the conclusion that they are also used for pay-per click activities, which are likely to generate revenues. The Complainant argues that such behavior constitutes bad faith since the Respondent takes undue advantage of the Complainant’s trademarks in order to generate profits. The Complainant cites F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956 and L’Oreal SA v. LV Kefeng, WIPO Case No. D2009-1231 to support its arguments. The Complainant believes also that another indication of bad faith use of the disputed domain names by the Respondent is, that websites to which they resolve, contain links to competitors of the Complainant. The Complainant reminds in this context that several UDRP panels have stated that the “use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by the Complainant’s own website is evidence of bad faith” (Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025 and Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591).

Furthermore, the Complainant alleges that the Respondent’s non reaction to the cease and desist letter despite numerous reminders and the indication of a false postal address constitute also a bad faith use of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain names can be transferred only where the Complainant has proven that each of the following three elements is present:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in SUITE NOVOTEL and MERCURE.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. In accordance with many decisions rendered under the Policy, the addition of descriptive, generic or geographic terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

In this case, the terms “Madrid”, “Santo Domingo”, “Paris”, and “Porte de Montreuil” are geographic terms which stand for the capitals of France and Spain and for certain areas in these cities. They have no distinctive character in this present context. The Complainant has hotels in these two cities, and the terms “Santo Domingo” and “Porte de Montreuil” form part of the name of the respective hotels. It is the same for the term “Suite” which stands also for a category of superior rooms in hotels and forms part of the name of one of the Complainant’s hotel in Paris. As it has been stated in various UDRP cases, the addition of a generic or descriptive word or geographic description such as the above mentioned terms as part of the domain names does not remove the strong possibility of confusion (see Montage Hotel&Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042 and Carlsberg A/S v. Personal/decohouse, decohouse, WIPO Case No. D2011-0972).

It is the same with the “.com” suffix in the disputed domain names which does not affect the determination that the disputed domain names are confusingly similar with MERCURE and SUITE NOVOTEL in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and the other cases cited therein).

Therefore, the disputed domain names can be considered as confusingly similar to the Complainant’s trademark rights in MERCURE and SUITE NOVOTEL.

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the material the Complainant has brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Especially, there is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.

The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain names. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554). The Respondent has linked the disputed domain names to websites, which content and design suggest Internet users that they are visiting official websites of the Complainant. The links displayed on the websites are apparently pay-per-click links whose only purpose is to generate income for the benefit of the Respondent. The Panel believes that the only reason why the Respondent registered and is using the disputed domain names is to redirect Internet traffic intended for the Complainant away from it to the Respondent’s and other websites with the intention to create income for the Respondent. In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter and subsequent reminders to it.

The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:

(i) circumstances indicating that the respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain names; or

(ii) the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain names have been registered and are being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, for the following reasons:

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain names will not infringe the rights of any third party.

Given the fact that the websites to which the disputed domain names resolve display information on the Complainant’s “Mercure Madrid Santo Domingo” and “Suite Novotel Paris Porte de Montreuil” hotels the Respondent must have been aware of the Complainant, its hotels and its trademark rights when he registered the disputed domain names. Therefore, the Panel believes that the Respondent registered the disputed domain names in bad faith.

The Panel finds further that the Respondent is also using the disputed domain names in bad faith. The Respondent has directed the disputed domain names to a website which contains a non-official presentation of the Complainant’s hotels including an apparently defective online registration system. The websites feature also a quite detailed description on the hotels, its surroundings and provide links to other travel related services such as parking places. Therefore, Internet users could believe that they have reached an official website of the Complainant which provides access also to other travel related services of interest for people visiting these cities.

The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions every time an Internet user would access his websites and activate unknowingly any of the sponsored links (see also Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtext.org, WIPO Case No. D2008-0025; Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556; Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). Furthermore, the website to which the disputed domain names resolve display also links to other hotels and accommodation services such as “airbnb” which are competitors of the Complainant. Thus, the Respondent’s behaviour may also enable others, especially competitors of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the infringement of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also a third party to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In the Panel’s opinion, another indication for bad faith use in the present case is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letter but continued his behaviour even after the Complainant had filed its Complaint with the Center.

Moreover, the Respondent has provided inaccurate contact details when he registered the disputed domain names or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs information for the disputed domain names and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent. It has been the same when the Complainant tried to reach the Respondent with a registered letter. Therefore, the Panel notes that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.

Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain names were registered and are 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 names <mercuremadridsantodomingo.com> and <suitenovotelparisportedemontreuil.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: November 18, 2013