WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Huajicani Hujiancai
Case No. D2014-0189
1. The Parties
Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Huajicani Hujiancai of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <accor-ecard.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 February 7, 2014. On February 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2014.
The Center appointed Bruce E. O’Connor as the sole panelist in this matter on April 28, 2014. 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
Complainant owns and operates several hotels under the trademark ACCOR, which is a well-known trademark, protected worldwide in particular in relation to hotel and restaurant services.
Complainant is the owner of the following ACCOR trademark registration:
International trademark ACCOR (stylized) No. 1128307 protected in China, dated February 20, 2012 and covering services in classes 35 and 43.
Respondent registered the disputed domain name on March 24, 2013.
5. Parties’ Contentions
Complainant is the world leader in economic and mid-scale hotels, and 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.
Complainant operates more than 3,500 hotels in 92 countries worldwide and over 450,000 rooms, from economy to upscale. The group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS. 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 their service quality.
Complainant owns, among others, the following domain names: <accorhotel.com>, <accorhotel.com.au>, and <mercure.com>. It mainly communicates on the Internet via these websites where Internet users can easily and quickly find and book hotel rooms or benefit from other services.
Complainant operates many hotels in Asia Pacific and more precisely 559 hotels and 105,908 rooms in around 20 countries. Complainant operates 130 hotels in China with 29,678 rooms and 18,653 employees in owned, leased and managed hotels.
Furthermore, Complainant operates several of its hotels in the province of Shanghai, China where Respondent is located.
Complainant became aware of Respondent’s registration of the disputed domain name that reproduces its trademark ACCOR. The disputed domain name resolved to the default page of a development tool for websites, partially in Chinese.
Before introducing the present action, Complainant sent via email a cease-and-desist letter to Respondent based on its trademark rights, asking the latter to cancel the disputed domain name. Respondent never replied.
Identical or confusingly similar
The disputed domain name is confusingly similar to the trademark ACCOR. Indeed, the disputed domain name reproduces Complainant’s trademark in its entirety, which previous panels have considered as well-known (Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262, Accor and SoLuxury HMC v. Fundacion Private Whois, WIPO Case No. D2012-1654, Accor v. Mao Jian Ting, WIPO Case No. D2012-0189, Accor v. Domainjet, Inc. WIPO Case No. D2012-0038).
The disputed domain name reproduces entirely the trademark ACCOR combined with the generic and descriptive term “ecard” intersected by a hyphen. This generic term suggests that there is an electronic card placed by Complainant on the website. Subsequently, this might lead Internet users to be influenced by the confusing similarity between the disputed domain name and Complainant’s trademark as well as with the legitimate websites of Complainant. In any cases, the addition of generic terms does not dispel any likelihood of confusion.
Other UDRP panels have come to the conclusion that hyphenation in domain names isinsufficient to distinguish the disputed domain name from Complainant’s mark because the dominant portion of each domain name is Complainant’s mark.
The generic Top Level Domain (“gTLD”) “.com” also is not to be taken into consideration when examining the identity or similarity between Complainant’s trademark and the disputed domain name.
Lack of rights or legitimate interests
Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of several ACCOR trademarks preceded the registration of the disputed domain name by years.
The disputed domain name is so identical to Complainant’s well-known trademark ACCOR that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Moreover, Respondent is not commonly known by the name “Accor”, in any way affiliated with Complainant, nor authorized or licensed to use ACCOR trademark, or to seek registration of any domain name incorporating said mark.
In addition, Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolves to a default page of a development tool for websites which can amount to passive holding since it is currently not an active website. Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.
Also, according to an online dictionary, the term “accor” has no meaning in English.
Additionally, Complainant attempted to contact Respondent by sending a cease-and-desist letter by postal letter and email. Respondent has never replied. UDRP panels have repeatedly stated that when Respondent does not avail himself of his right to respond to Complainant, it can be assumed that Respondent has no rights or legitimate interests in the disputed domain name.
Bad faith registration and use
It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Firstly, Complainant is well known throughout the world, including in China. Secondly, as previously noted, other UDRP panels have found the ACCOR trademark to be famous worldwide.
In light of the reputation of Complainant’s trademark ACCOR, Respondent’s reproduction of the ACCOR trademark in its entirety clearly proves that Respondent was aware of the existence of Complainant’s trademark especially when considering the fact that Complainant operates some of its hotels in the city of Shanghai, China where Respondent is located.
Bad faith has already been found 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.
It has been held in previous cases that knowledge of a corresponding mark at the time of the registration of the domain name suggests bad faith.
Additionally, a quick trademark search or an Internet search for the term “accor” would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith.
Moreover, supposing that Respondent was not aware of the possibility of searching trademarks online before registering the domain name, a simple search via Google or any other search engine using the keyword “accor” shows that all of the first results relate to Complainant’s hotels.
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 Complainant and its trademark, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain name.
Moreover, Respondent has not replied to the cease-and-desist letter Complainant sent. Such behaviour has already been considered as an inference of bad faith by previous UDRP panels.
In addition, as will be discussed below, Respondent does not make any use of the disputed domain name since it resolves to a default page of a development tool for websites which can be assimilated to an inactive website.
Some elements may be put forward to support the finding that Respondent also uses the disputed domain name in bad faith.
Bad faith can be found where Respondent knew or should have known of Complainant’s trademarks rights and, nevertheless registered a domain name in which he had no rights or legitimate interests.
The disputed domain name resolves to a default page of a development tool for websites which amounts to an inactive page. Nevertheless, this state of inactivity does not mean that the disputed domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith.
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the Panel must give close attention to all the circumstances of respondent’s behaviour.
In one of these cases, the panel concluded that respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
Finally, it is likely that Respondent registered the disputed domain name to prevent Complainant from using their trademarks in the disputed domain name.
The clear inference to be drawn from Respondent’s operations is that he is trying to benefit from the fame of Complainant’s marks.
It 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 confusion.
Moreover, there is no doubt that many Internet users attempting to visit Complainant’s websites have ended up on the web page set up by Respondent. Indeed, the disputed domain name is confusingly similar to Complainant’s trademark and previous UDRP panels have ruled that likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site.
Such use of the disputed domain name was not authorized by Complainant; in this respect, previous UDRP panels have considered that in the absence of any license or permission from Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.
Finally, Respondent's failure to respond to Complainant’s cease-and-desist letter behaviour has already been considered as an inference of bad faith by previous UDRP panels.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In view of Respondent’s failure to submit a response, the Panel will decide this proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.
A. Identical or Confusingly Similar
The Complainant has established rights in the ACCOR trademark, by reason of its registration cited above.
The disputed domain name differs from that trademark only by the addition of the term “ecard”, the addition of a hyphen, and the generic gTLD “.com”. These differences do not distinguish the disputed domain name. The generic term “ecard” is easily linked to the types of hotel and restaurant services provided by Complainant under the ACCOR trademark. And it is well established that the addition of a gTLD does not typically distinguish a domain name from a trademark.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, and that the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the respondent’s 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) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is 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 Complainant has made a prima facie showing that Respondent does not come under those circumstances.
There is no evidence that Respondent has been known by the disputed domain name, or that Respondent is making a noncommercial or fair use of that domain name.
Notice of this dispute occurred on Complainant’s rights in the June 21, 2013, the date upon which Complainant transmitted its cease-and-desist letter to Respondent. This date is subsequent to the effective date of Complainant’s rights in the ACCOR trademark. Prior to notice, the only evidence of use is Respondent’s web site to which the disputed domain name resolves. That web site includes links to various other sites offering “wd” versions of Chinese language Linux management, operating, and caching systems. Although the issue is not without doubt, the Panel must conclude that in view of the famous nature of the ACCOR trademark, this use was not bona fide.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, Complainant must establish that Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the Trademark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
Regarding both registration and use in bad faith, the Panel finds these issues difficult to decide.
Notwithstanding Complainant’s contentions regarding the duty of Respondent to conduct a trademark search or its duty to do a Google search or its duty to respond to Complainant’s cease-and-desist letter, the Panel believes that there are no such duties. What concerns the Panel is that Respondent’s web site, far from being a passive site, appears to include active links to “WD” Chinese language Linux management, operating, and cache systems available from one company, “WD Linux, Inc.” This site and these links do not trade on or imply in any way a relationship with Complainant and its ACCOR trademark. Why a software developer would attempt to gain from the reputation of a hotel and restaurant services provider is difficult for the Panel to understand.
The facts in the previous UDRP decisions, finding that the ACCOR trademark was famous, are also clearly distinct from those in this matter. In Accor v. Domainjet, Inc., WIPO Case No. D2012-0038, the respondent was operating in the same channels of trade as Complainant. In Accor v. Mao Jian Ting, WIPO Case No. D2012-0189, the respondent responded to a cease-and-desist letter by demanding excessive compensation for domain name transfer. In Accor and SoLuxury HMC v. Fundacion Private Whois, WIPO Case No. D2012-1654, the respondent had registered numerous domain names including the ACCOR trademark. In Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262, the domain name included the word “hotel”. The bad faith of the respondent in these decisions was apparent.
What sways the Panel in deciding these issues for Complainant and against Respondent is that in this Panel’s view there is no reason for a Linux software developer to include the generic word “ecard” in a domain name. That word is inextricably linked in the public’s mind with the retail and hospitality industry and has little if any relationship to software systems. There is also no known relationship between the software developer, WD Linux, Inc., and Respondent. Given the fame of the ACCOR trademark and the absence of any defense by Respondent, the Panel must conclude that Respondent intended for some reason to unfairly trade on the goodwill of Complainant in registering and using the disputed domain name.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
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 <accor-ecard.com> be cancelled.
Bruce E. O'Connor
Date: May 10, 2014