WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. PrivacyProtect.org / Petr Kozir
Case No. D2013-0156
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / Petr Kozir of Komsomolsk na Amure, Khabarovskiy kray, Russia.
2. The Domain Name and Registrar
The disputed domain name <mercuregeelong.com> is registered with DomainContext, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2013, 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 January 28, 2013 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 January 31, 2013.
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 February 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. On January 28, January 31 and February 4, 2013, the Center received email communications from the Respondent indicating its intention to transfer the disputed domain name. The Center acknowledged receipt of the Respondent’s email communications and invited the Complaint to comment thereon. On February 7, 2013, the Complainant sent an email communication to the Center confirming its intention to proceed with the case until a final determination. No further communications were filed with the Center. The Respondent did not submit any formal Response. Accordingly, the Center noted that it had received no formal Response from the Respondent and notified the commencement of panel appointment process to the Parties on March 4, 2013.
The Center appointed David J.A. Cairns as the sole panelist in this matter on April 10, 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.
4. Factual Background
The Complainant is a French company in the hotel sector. It operates 3,436 hotels in 92 countries worldwide. Its hotel brands include “Mercure”. The Complainant operates 201 hotels in Australia among which are 61 Mercure hotels. The Complainant operates a hotel in Geelong, “Mercure Geelong”. Geelong is an Australian port city in the state of Victoria.
The Complainant is the owner of Australian trademark nº 612263 for the word mark MERCURE, first registered on September 23, 1993.
The Complainant also owns the domain name <mercure.com> first registered on April 16, 1996. The Mercure Hotel Geelong is the registrant of the domain name <mercuregeelong.com.au>.
The disputed domain name was registered on November 12, 2012. At the time of the Complaint the website at the disputed domain name hosted articles about cooking recipes in the Ukrainian Cyrillic alphabet. The Panel entered the disputed domain name in his web browser on April 24, 2013 and received an error message.
5. Parties’ Contentions
The Complainant states that the disputed domain name is confusingly similar to the trademark MERCURE. The Complainant states that the disputed domain name reproduces the Complainant’s trademark in its entirety, which previous panels have found may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark.
The Complainant further states that the addition of the geographical term “geelong” reinforces the likelihood of confusion because this domain name refers to the Mercure Geelong Hotel operated by the Complainant. Further, previous panels have held that adding a geographical term is insufficient to give any distinctiveness to the disputed domain name. The Complainant further states that the Respondent by registering the disputed domain name has created a likelihood of confusion with the Complainant’s trademark because Internet users will be misled into thinking that disputed domain name is in some way associated with the Complainant.
Finally, the Complainant states that it is well established that the mere addition of the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use or register its trademark or to seek registration of any domain name incorporating the trademark. Further, the Respondent has no prior rights or legitimate interests in the domain name as the registration of the MERCURE trademark preceded the registration of the disputed domain name. The similarity between the disputed domain name and the well-known MERCURE trademark of the Complainant demonstrates that the Respondent cannot pretend it was intending to develop a legitimate activity through the disputed domain name. Moreover the Respondent is not commonly known by the name MERCURE, and Respondent has not demonstrated any use of or demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Complainant states that the registration of a disputed domain name with a privacy shield service to hide its identity confirms that the Respondent has no legitimate interests in respect of the disputed domain name. Finally, the Complainant states that the word “Mercure” has no meaning in English or in Australia.
The Complainant further states that the disputed domain name has been registered and used in bad faith. It states that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. It states that the reputation of the Mercure trademark, and the fact that the disputed domain name combines this trademark with the geographical term “Geelong”, clearly proves that the Respondent was aware of the existence of the Complainant’s trademark and its Mercure Geelong Hotel. The Complainant suggests that the facts demonstrate opportunistic bad faith, referring to previous panel decisions. The Complainant further states that a trademark or Internet search for the term “Mercure” would have revealed the existence of the Complainant’s trademark and the Respondent’s failure to do so is a contributory factor in its bad faith.
The Complainant states that the Respondent has used the disputed domain name in bad faith because the Respondent knew or should have known of the Complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. The Complainant states that there is no doubt that there are many internet users attempting to visit Complainant’s websites, and especially <mercuregeelong.com.au>, have ended up on the page set up by the Respondent. It states that it is more likely than not that the Respondent’s prime motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest confusion. There is no doubt that the Respondent’s aim was to attract Internet users seeking the Complainant’s <mercuregeelong.com.au> website.
The Complainant requests that the disputed domain name be transferred.
As noted above, there were three communications from the Respondent prior to the formal notification of the Complaint. The first communication was in Russian, and in reply the Center advised that the language of the proceeding was English. The second communication was in Russian and English with the English text reading “Transfer domain. He is not a great interest to me.” The third communication was also in Russian and English with the English text reading “Domain is already locked. If the domain is unlocked I can send you the code for domain transfer.”
The Respondent did not reply to the Complainant’s contentions as set out in the Complaint.
6. Discussion and Findings
The Panel is required to 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 (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the MERCURE trademark in Australia.
The disputed domain name is not identical with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark entirely, adding the geographicial suffix “geelong”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms .... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.” Further, “the similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
In the present case, the Panel considers that on a straightforward visual comparison the disputed domain name is confusingly similar to the MERCURE trademark for the following reasons: (i) MERCURE is a well known trademark with no meaning in English and therefore is distinctive; (ii) “geelong” is a geographical name without any other meaning; (iii) the MERCURE trademark is easily recognizable in the domain name as a whole; (iv) the addition of ‘geelong’ emphasizes rather than neutralizes the trademark function of “mercure” (suggesting a MERCURE brand in Geelong); and (v) the disputed domain name in its entirety identifies an address that Internet users will assume relates to a hotel of the Complainant in Geelong (and such a hotel in fact exists and uses a domain name very similar to the disputed domain name).
Therefore the addition of the suffix “geelong” does not avoid a confusing similarity between the MERCURE trademark and the disputed domain name, and so the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the MERCURE trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. In relation to paragraph 4(c)(i) the disputed domain name has previously been used to host a website relating to Ukrainian cooking but apparently without any offering for sale of goods or services, and currently is inactive. Accordingly, the Panel finds there is no evidence of demonstrable preparations 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.
Paragraph 4(c)(ii) does not apply as there is no evidence that the Respondent is known by the disputed domain name. In respect of paragraph 4(c)(iii) there is no evidence of actual use of the disputed domain name for commercial gain. Nevertheless, the Panel considers that the Respondent has an intent of commercial gain or to mislead consumers, and the noncommercial use to date cannot be described as either “legitimate” or “fair”. The Respondent has adopted a domain name that combines a well-known trademark with a geographical location, in which location the Complainant in fact operates a hotel under the trademark. The Respondent has no connection with either the trademark or the place, and in fact lives thousands of kilometres away. The disputed domain name also closely ressembles a country code top-level domain (ccTLD) used by the Complainant’s hotel in Geelong. In these circumstances, the Panel concludes that the disputed domain name was registered for opportunistic reasons in full knowledge of the Complainant’s MERCURE trademark, and with an intent to exploit in some manner (and for commercial gain) the association of the disputed domain name with the Complainant’s trademark and hotel in Geelong.
In these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was registered in bad faith and also ‘is being used’ in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith. The Panel considers that none of the circumstances referred to in paragraph 4(b) have been definitively established in this case. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be ‘in particular but without limitation’.
In the present case the following circumstances establish registration in bad faith: (i) MERCURE is a well-known trademark in the hotel industry; (ii) as noted above, the Panel concludes from the evidence that the Respondent’s linkage of the words “mercure” and “geelong” in a domain name was not coincidental but deliberate and in full knowledge of the Complainant’s MERCURE trademark; and (iii) the Panel also finds that at the time of registration that the Respondent knew that internet users would mistakenly believe that the disputed domain name related to the Complainant’s hotel in Geelong.
The Panel is also satisfied that the Respondent is using the disputed domain name in bad faith because: (i) the Respondent continues to hold the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant’s trademark (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 and (ii) it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to be bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group PLC v. Sonoma International LDC, WIPO Case No. D2002-0131).
The Panel is satisfied that the disputed domain name was registered and is used opportunistically, and with a wilful indifference to the Complainant’s trademark rights and the deception of Internet users. This constitutes registration and use in bad faith, even though the Respondent has not succeeded in making any commercial gain from the registration.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <mercuregeelong.com> be transferred to the Complainant.
David J.A. Cairns
Date: April 25, 2013