WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / warnier francis

Case No. D2021-2247

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / warnier francis, France.

2. The Domain Name and Registrar

The disputed domain name <accorinvest-europe.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2021, the Registrar 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 July 14, 2021 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 July 15, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 26, 2021. 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 the French entity Accor, a major actor in the field of hotel services worldwide. It operates over 5,100 hotels in more than 110 countries under several brands such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure and Ibis. It is particularly present in Europe, where it operates over 3,000 hotels.

The Complainant also indicates that “[i]n May 2018, Accor opened up the share capital of AccorInvest to long-term investors, among which sovereign wealth funds and institutional investors, in order to allow AccorInvest to reach its ambitions in terms of growth and development. Today, AccorInvest is present in 28 countries with 856 hotels managed by Accor. AccorInvest’s ambition is to consolidate the property portfolio through hotel renovations and new hotel developments in Europe on economy & midscale segments”.

The Complainant owns numerous trade mark rights over ACCOR, but also over ACCORINVEST (or ACCOR INVEST), including the following:

- French trade mark ACCORINVEST (fig.) No. 4367929, registered on October 6, 2017; and

- European Union trade mark ACCOR INVEST (fig.) No. 17469222, filed on November 13, 2017 and registered on March 9, 2018.

It also owns and operates a number of domain names to offer its services, such as <accorinvest.com>, registered on February 9, 2017 and <accorinvest.fr>, registered on December 12, 2017.

The disputed domain name <accorinvest-europe.com> was registered on May 18, 2021, through the services of a privacy shield. In the course of the proceeding, the Registrar disclosed the identity of the Respondent, an individual domiciled in France.

The disputed domain name appears to have been used for a pay-per-click scheme. Besides, the Complainant has argued and submitted evidence that an email server was configured on the disputed domain name.

The Complainant’s representative contacted the Respondent on May 24, 2021, to request the voluntary transfer of the disputed domain name. No response was sent by the Respondent, in spite of several reminders.

5. Parties’ Contentions

A. Complainant

In essence, the Complainant argues as follows:

On the first element of the Policy, it states that the disputed domain name <accorinvest-europe.com> reproduce its trade marks ACCOR and ACCORINVEST. It highlights that “the full inclusion of the Complainant’s trade marks ACCOR and ACCOR INVEST in combination with the geographical term “europe” enhances the false impression that the disputed domain name <accorinvest-europe.com> is somehow connected to the Complainant. In fact, the unsuspecting Internet user could assume that the site is related to the Complainant, since the combination of the Complainant’s trademark and such term could mislead the Internet users into believing that the domain name is registered by the Complainant, in order to promote its corporation’s activities and services”. It also stresses that neither the insertion of a hyphen, nor the addition of the geographical term “Europe”, mitigate the confusing similarity.

On the second element of the Policy, the Complainant indicates that the Respondent “is neither affiliated with Complainant in any way nor has he been authorized by the Complainant to use and register its trade marks, or to seek registration of any domain name incorporating said trade mark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of Complainant’s ACCORD and ACCOR INVEST trademarks preceded the registration of the disputed domain name for years”. It also states that “given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is virtually identical to Complainant’s trade mark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights”.

Regarding the registration of the disputed domain name in bad faith, the Complainant claims that it is implausible that the Respondent was unaware of the Complainant and its rights when it configured the disputed domain name. This is all the more true as the Respondent is domiciled in France. In this respect, the Complainant relies in particular on the worldwide reputation of its trade marks ACCOR and ACCOR INVEST. In any event, any quick search over ACCOR and ACCOR INVEST would have revealed to the Respondent the existence of the Complainant and its activities.

Regarding the use of the disputed domain name in bad faith, the Complainant relies on several grounds. First, it refers indirectly to the doctrine of bad faith through passive holding. In this respect, it indicates in particular that “in the absence of any license or permission from Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed”. Second, it claims that the configuration of an email server on the disputed domain name leads to a presumption of bad faith use, because of the risk of engagement in a phishing scheme. Third, it indicates that using a domain name for a pay-per-click scheme that diverts users to the websites of competitors amounts to bad faith. All in all, the Complainant concludes by stating that “[i]t is more likely than not, that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainants’ trademark rights, through the creation of initial interest of confusion with the Complainant’s marks”.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.

The Complainant has shown its rights over the trade mark ACCORINVEST, which combines the well-known trade mark ACCOR and the declination INVEST. This sign is used to identify a new offer of the Complainant directed to investors.

The disputed domain name <accorinvest-europe.com> reproduces identically the trade mark of the Complainant. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Further, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (WIPO Overview 3.0, section 1.8). In this case, the addition of a hyphen, followed by the geographical term “Europe”, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade marks.

Therefore, the Panel finds that the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Besides, the use of the disputed domain name in connection with a pay-per-click scheme does not confer a legitimate interest to the Respondent. On the contrary, as stated in the Complaint, “given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is virtually identical to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights”.

Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Panel is satisfied with the arguments put forward by the Complainant. The disputed domain name was indeed registered, and is being used in bad faith.

The Respondent, who is domiciled in France, could hardly ignore the existence and reputation of the trade mark ACCOR of the Complainant in the field of hotel services. This reputation is extendable, at least to a relevant point, to the trade mark ACCORINVEST, in which ACCOR is clearly the distinctive and dominant element. The Respondent chose to configure the disputed domain name by associating the trade mark ACCORINVEST, with the geographical term “Europe”. Europe is where the Complainant has more activities, and where investors can participate in the new scheme of the Complainant.

Without any doubt, the Respondent targeted the Complainant when registering the disputed domain name, and the Panel cannot foresee any possible legitimate use of the disputed domain name: the connection is too obvious. The disputed domain name <accorinvest-europe.com> will be perceived by Internet users as hosting webpages connected to the Complainant, or it will be used to send emails which will provide the false impression that they originate from employees of the Complainant. In this respect, the Complaint indicates that email servers were configured on the disputed domain name, with the subsequent risk of phishing activities, further suggesting bad faith in the use of the disputed domain name. See WIPO Overview 3.0, section 3.4.

Likewise, the operation of pay-per-click links which direct users to competitors of the Complainant also characterizes the bad faith of the Respondent. This is true even if the content of these links is generated automatically. See WIPO Overview 3.0, section 3.5.

Finally, the Panel notes that the Respondent’s concealed his identity when registering the domain name, and then chose not to respond to the Complainant’s request, and did not respond to the Complaint. These elements are further evidence that the Respondent acted in bad faith.

Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.

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 <accorinvest-europe.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: August 30, 2021