WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Song Zhi

Case No. D2012-1382

1. The Parties

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

The Respondent is Song Zhi of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <mercureshotels.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2012. On July 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2012, 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 Complainant filed an amended Complaint on July 16, 2012.

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 July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2012.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 5, 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.

The Decision due date was extended from September 19, 2012 to September 26, 2012.

4. Factual Background

The Complainant is a major player in upscale and luxury hospitality services. For more than 45 years, it has provided customers with expertise acquired in this core business.

The Complainant operates more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, from budget to upscale. The group includes notable hotel chains such as MERCURE. The Complainant’s brands offer hotel stays tailored to the specific needs of each business and leisure customer, and are recognized and appreciated around the world for the quality of their services.

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

More specifically, the Complainant operates 110 hotels in China and, as of December 31, 2011, had more than 18,653 employees in that country. In particular, the Complainant operates 13 MERCURE hotels in China. Its presence during 27 years in the country confers to the Complainant a genuine experience; the Complainant has also established strong acquaintances and relationships with miscellaneous local partners. Moreover, the Complainant has developed a wide range of its brands in China from economy to luxury hotels. The Complainant owns and operates several hotels under the trademark MERCURE, which is a well-known trademark protected worldwide in particular in relation to hotels services.

The Complainant is notably the owner of many MERCURE trademark registrations which designate China and the website of the Respondent reproduces the designs of the two following trademark registrations:

1. MERCURE, International Trademark n° 847330 dated of December 13, 2004 and covering services in classes 39, 41 and 43.

2. MERCURE, International Trademark n° 937720 dated of August 24, 2007 and covering services in class 43.

The Complainant is also the registered owner of the domain name <mercure.com> reflecting its trademark in order to promote their services and this domain name was registered on April 16, 1996.

The disputed domain name was registered on December 30, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MERCURE as the merely addition of the letter “s” at the end of the sign “mercure” does not change the way consumers perceive the sign. Consequently, the disputed domain name is considered as reproducing the Complainant’s trademark in its entirety, which previous UDRP panels have judged to be well-known. Moreover, the addition of the generic word “hotels” tends to compound the confusion. The sole adjunction of this word is not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademark. The confusion is only heightened by adding the generic word “hotels”, because the term is descriptive of the services provided by the Complainant in relation to the trademark. Lastly, it has been held relentlessly by miscellaneous UDRP panels that the word “hotel” is generic and that this adjunction worsens the risk of confusion when the generic term is linked with the services provided by the Complainant. Accordingly, by registering said disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant because there are three MERCURE hotels in Shanghai, China operated by the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for following reasons:

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

2. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MERCURE trademark preceded the registration of the disputed domain name <mercureshotels.com> for years.

3. The disputed domain name is so similar to the well-known MERCURE trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Indeed, the Respondent has kept this confusion alive by reproducing the MERCURE trademark design on the homepage of the website to which the disputed domain name resolves.

4. In addition, the Respondent is not in any way affiliated with the Complainant, nor authorized or licensed to use the MERCURE trademark, or to seek registration of any domain name incorporating said mark. In previous decisions, UDRP panels found that in the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

5. Even if the disputed website does not seem currently operational (it may be operational to people using a Chinese keyboard), Internet users may at some point try booking hotels rooms through the Respondent’s websites, which will allow the Respondent to obtain confidential information like credit card numbers and personal identification numbers from the Complainant’s clients. It goes without saying that this behavior is not a bona fide offering of goods or services. In providing such a service, the Respondent has committed a fraud which is known under the coined term of phishing. Arguably, phishing cannot be deemed as being a bona fide offering of goods and services. The Respondent’s attempt to pass itself off as the Complainant shows that the Respondent is making neither a bona fide offering of goods or services under the Policy.

6. Further, the Complainant attempted to contact the Respondent by sending a cease-and-desist letter and reminders. The Respondent did not reply to any of them. Has the Respondent had a right or a legitimate interest in the disputed domain name, it would have made sure to state the reasons of its registration.

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith on the following grounds:

1. The Complainant is well-known throughout the world, particularly in China, where ACCOR runs 110 hotels; as of December 31, 2011, the Complainant had more than 18,653 employees in this country. In particular, the Complainant operates including 13 Mercure hotels in China including 3 in Shanghai. It is impossible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Simply reproducing the well-known and recognizable trademark MERCURE, the Respondent has proved its knowledge of the Complainant and its trademark reputation. Consequently, bad faith has already been formed 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. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. Consequently, in view of the abovementioned circumstances, it is established that the Respondent registered the disputed domain name in bad faith.

2. The essence of bad faith use of a domain name under the UDRP is using a domain name which is confusingly similar to another’s trademark or service mark in order to divert web traffic for commercial gain using the goodwill built up by the owner of the trademark or service mark. There is no doubt in this case that, at all times, the Respondent was aware that the sign MERCURE enjoyed a substantial reputation worldwide as the Complainant’s trademark MERCURE are also reproduced. The Respondent passes himself as the Complainant and offers hotel booking services. In light of this knowledge, the Respondent uses the disputed domain name to direct Internet users to a webpage offering hotels rooms’ bookings which are likely, at some point, to generate revenues. It may already generate revenues since it may work with people using a Chinese keyboard. UDRP panels have held that the use of 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 use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the policy. Such use of the disputed domain name was not authorized by the Complainant. Furthermore, it may not be excluded that the rationale which lies at the heart of the registration of the disputed domain name was to use them for phishing purposes. There is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the web pages set up by the Respondent. Indeed, the disputed domain name are confusingly similar to the Complainant’s trademark and previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”, L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318, and Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095.

3. The fact to remain silent further the Complainant’s many overtures to address the dispute is an additional demonstration of the bad faith of the Respondent.

4. Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting their trademark in the disputed domain name. This type of conduct constitutes evidence of the Respondent’s bad faith.

5. Similarly reproducing famous trademarks in domain names in order to attract Internet users to the respondent’s own website cannot be regarded as fair use or use in good faith. It is more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, trough the creation of initial interest of confusion. Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the 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 that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the MERCURE mark covering classes 39, 41 and 43 in several countries including China. The Panel finds that the Complainant has rights and continues to have such rights in the relevant MERCURE mark.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s hotel services.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark MERCURE with the letter “s” and the word “hotels” and (b) the generic top level domain suffix (“gTLD”) “.com”. The Panel finds that the addition of the letter “s” and the word “hotels” to be non-distinctive and it does not provide additional specification or sufficient distinction from the Complainant or its trademark MERCURE. Internet users could be confused that the Respondent’s website is one of the Complainant’s official websites offering hotel services online. It is also a well accepted principle that the addition of top level domain suffix such as “.net” or “.com” being the generic top-level domain is not a distinguishing factor. Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Accordingly, the Panel finds that the disputed domain name <mercureshotels.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the 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 name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of “mercureshotels” in its business operations.

2. There is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark.

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.

4. The Complainant and its MERCURE mark enjoy a global reputation including China, with regard to quality hotel services.

Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the MERCURE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

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

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

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

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the global reputation of the Complainant and its MERCURE mark, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel finds that the term “mercure” in the Complainant’s MERCURE mark has acquired a global reputation in hotel services and is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.

Given the reputation of the Complainant’s MERCURE mark in hotel services, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is identical or confusingly similar to the Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent uses the disputed domain name to direct Internet users to a webpage offering hotels rooms’ bookings with the Complainant’s MERCURE mark on the website to which the disputed domain name points to. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

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 <mercureshotels.com> be cancelled.

Susanna H.S. Leong
Sole Panelist
Dated: September 27, 2012