WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Domains By Proxy, LLC / Abdulrahman Almarri
Case No. D2015-0777
1. The Parties
Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United Sates of America / Abdulrahman Almarri of Doha, Qatar, self-represented.
2. The Domain Names and Registrar
The disputed domain names <accor.company> and <accorcompany.com> (collectively the “Domain Names”) 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 April 30, 2015. On April 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 1, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 5, 2015.
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 Respondent of the Complaint, and the proceedings commenced on May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. Respondent submitted substantive communications on May 7 and 18, 2015, and confirmed that its latter communication could be considered is final Response. Complainant submitted a supplemental filing on May 15, 2015. On May 20, 2015, Respondent submitted a third and supplemental filing. The proceeding was suspended on May 26, 2015 and reinstituted on June 26, 2015.
The Center appointed John C McElwaine as the sole panelist in this matter on June 26, 2015. 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.
On June 26, 2015, Complainant submitted a response to the statements and allegations in Respondent’s response made by email on May 20, 2015.
On July 7, 2015, pursuant to paragraph 11(b) of the Rules, the Panel requested Respondent to provide the Center with a translation into English of the Response annex titled “State of Qatar Ministry of Economy and Commerce” by July 14, 2015. Within five days of its receipt of Respondent’s translation, Complainant was permitted to comment to the Center regarding the accuracy of this translation. Respondent and Complainant submitted translations of this annex on July 9 and 15, 2015, respectively.
As an initial matter, as set forth herein, there have been multiple email communications by Complainant and Respondent. Under the Policy and the Rules, parties have no right to unilaterally submit additional arguments or evidence beyond the Complaint and Response. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. Given the fact that Respondent is an individual, not a native English speaker, and is unrepresented in this matter, the Panel finds exceptional circumstances and will consider his emails of May 7, 18 and 20, 2015, collectively as a Response. To be equitable to Complainant, the Panel will consider its supplemental filing of June 26, 2015 which is supported by a certification.
4. Factual Background
Complainant, Accor, is a French company that operates 3,700 hotels in 92 countries. Complainant operates websites located at “www.accor.com” and “www.accorhotels.com” used for hotel accommodation services, which were registered on February 23, 1998 and April 30, 1998, respectively.
Complainant is the owner of International Trademark Registration No. 727696, registered on December 28, 1999, for the mark ACCOR covering products and services in classes 16, 39, and 42, and of International Trademark Registration No. 1128307, registered on February 20, 2012, for the mark ACCOR (and Design) covering products and services in classes 35 and 43.
In addition, Complainant is the owner of United States Trademark Registration No. 2838984, registered on May 4, 2004, for the word mark ACCOR, covering services in class 38, 39 and 42. In Qatar, Complainant owns the following trademark registrations for the mark ACCOR: Qatari Trademark Registration No. 18106, August 16, 2004, duly renewed and covering services in class 42; Qatari Trademark Registration No. 25986, January 23, 2006, covering services in class 42; Qatari Trademark Registration No. 45715, July 24, 2008, covering services in class 42; Qatari Trademark Registration No. 73028, July 20, 2014, covering services in class 35; and Qatari Trademark Registration No. 73029, September 28, 2014 covering services in class 42.
Respondent, Abdulrahman Almarri, registered the Domain Name <accor.company> on November 20, 2014 and the Domain Name <accorcompany.com> on March 21, 2015, through the Domains By Proxy, LLC proxy registration service.
The Domain Names link to a webpage that displays a message, “Accor Online Services coming soon”, along with both Domain Names listed and “[…]@accor.company, Houston, TX, United States”.
5. Parties’ Contentions
Complainant contends that the Domain Names should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant asserts in its amended Complaint dated May 5, 2015 that it is a world leader in economy and mid-scale hotels, and a major player in upscale and luxury hospitality services. Complainant operates more than 3,700 hotels in 92 countries worldwide and over 480,000 rooms, from economy to upscale. Complainant alleges to own numerous trademark registrations throughout the world for ACCOR. Among them are two International Trademark Registrations Nos. 727696 and 1128307 and U.S. Trademark Registration No. 2838984 registered on May 4, 2004 and duly renewed covering services in classes 38, 39, and 42.
Complainant began to expand into Qatar in 2013, with a management agreement to open two establishments under the Ibis and Adagio brands in Doha. This expansion has been covered by the media. Complainant provides several articles discussing its expansion in Qatar. The articles provided were written on November 13, 2013, on February 21, 2013, and March 2, 2015, all discussing the future of Accor hotels in Qatar.
Complainant states that the Domain Names are confusingly similar to Complainant’s trademark ACCOR, regarding that the Domain Names reproduce the mentioned trademark in its entirety. Complainant considers this fact as sufficient to establish that a domain name is identical or confusingly similar to Complainant’s trademark.
Complainant further asserts that prior UDRP decisions have found that the ACCOR trademark is well-known.
Complainant notes that the mere addition of the generic word, “company” used in the Domain Names is not sufficient to distinguish the Domain Names from Complainant’s ACCOR trademark. Complainant contends that the addition of a generic or descriptive term to Complainant’s mark does not influence the similarity between a trademark and a domain name.
Complainant contends that Respondent has no rights to or legitimate interest in the Domain Names. Complainant asserts that the ACCOR trademark preceded the registration of the Domain Names by years. As well, Complainant states that it has not licensed or otherwise authorized Respondent to use the ACCOR trademark, there is no relationship between the parties, and nothing in the record suggests that Respondent is commonly known by the Domain Names.
In addition, Complainant asserts that Respondent did not demonstrate preparations to use the Domain Names in connection with a bona fide offering of goods and services. The Domain Names resolve to a website under construction which says “Accor Online Services coming soon” along with the Domain Names and “[…]@accor.company, Houston, TX, United States”. Complainant did not find any evidence or reference leading to the existence of the company “Accor Online Services”.
Complainant attempted to contact Respondent by sending a cease-and-desist letter by postal letter and email dated February 27, 2015 to which Respondent never replied. Complainant has sent several more cease-and-desist letters that Respondent did not respond to. Complainant argues 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 Domain Names.
Complainant contends that the Domain Names are so identical to Complainant’s well-known trademark ACCOR that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Names.
Complainant alleges that Respondent intentionally registered and is using the Domain Names in bad faith. Complainant stated that it was implausible that the Respondent was unaware of Complainant’s ACCOR trademark as Complainant’s trademarks are well-known worldwide. Respondent did not reply to the cease-and-desist letters. Complainant argues that this behavior has been considered as evidence of bad faith in previous UDRP decisions.
Complainant states that the logo displayed on the websites of the Domain Names is used by various websites which relate to companies whose corporate names reproduce trademarks. Complainant alleges that these companies are probably fake and that Respondent’s use of the logo does not constitute good faith.
Respondent disputes Complainant’s assertions in three email responses, dated May 7, May 18 and May 20, 2015.
In the response on May 7, 2015, Respondent contends that he did not act in bad faith in registering the Domain Names. Respondent refers to ten other domain names which he alleges are close to Complainant’s mark and allowed online.
Further, Respondent contends that “accor” in Japanese means “agreement” in Arabic. He determined that this would be a good name for his company due to the meaning of “accor”. Respondent argues he has a legitimate interest in the Domain Names because they incorporate a common generic term that differs from the trademark ACCOR and there are many other domain names registered incorporating “accor”.
Additionally, Respondent asserts that he did not act in bad faith in not responding to the February 27, 2015 cease-and-desist letter sent by Complainant. He asserts that he did not think it was legitimate, believing it to be spam or an attempted theft of his Domain Names.
In the response on May 18, 2015, Respondent repeated that he chose the Domain Names because “accor” in Japanese means “agreement” in Arabic, his native language. He provided a Google translation of the word “アコール” (“accor” in Japanese) to Arabic and then to English.
Respondent further argues in the May 18, 2015 response that through his research he has found more than thirty domain names registered under the name “Accor” that do not belong to the hotel company. He contends that the expansion into Accor Online Services and Accor Services, as registered in the United States and Qatar, respectively, is an addition to his family-owned company Al Qataria Trade and Marketing. He states that this company has been established for over ten years. He argues that if others use the name “Accor” in domain names, he should be allowed to do so as well, since he is participating in different business activities than Complainant.
Complainant repeats in his second response that he did not answer the cease-and-desist letter because he believed it to be spam or an attempt to steal his Domain Names. He argues that his data has always been open to the public and his email immediately appears when one looks at “www.accor.company”. He asserts that there was a period of time in which companies with the name “Accor” could have acquired the Domain Names from December 31, 2014 to March 8, 2014, with a complaint period from March 10, 2014 to June 10, 2014. Respondent states that no company acquired them, and therefore the Domain Names were legally available for anyone. He argues that Complainant bought the domain names <accor.digital> on September 3, 2014 and <accor.restaurant> on November 4, 2014. The Domain Name <accor.company> was available at that time and Complainant did not buy it. Respondent asserts that the Domain Name <accorcompany.com> was available for purchase since 1985 and that he bought it March 21, 2015.
Respondent argues that he has not used the Domain Names with a business brand name, logo, or symbol that identifies it with the other 30+ Accor names that are registered. Respondent states that he has not shown a bad intention. Respondent, in his second response, provided another list of domain names that incorporate Accor into them. He also provides a table that includes the nationalities of those that bought domain names that incorporate Accor.
In his May 18, 2015 email, Respondent annexed what appears to be a company registration certificate from the State of Qatar Ministry of Economy and Commerce (the “Company Registration”) in the Arabic language.
C. Complainant's June 26 Supplemental Filing
In its June 26, 2015 filing Complainant addressed several of Respondent’s points.
In addition to the previously claimed trademark registrations, Complaint asserts that it owns five Qatari trademark registrations for the mark ACCOR, the details of which are contained in the Factual Background, supra.
Complainant annexed to its June 26, 2015 filing an English translation of the Company Registration. Complainant points out that the trade name on the Company Registration is the Arabic translation of “Accor Services”, whereas the trade name of Respondent’s head office is different: “ALQATARIA Trading & Marketing”. Moreover, “Accor Services” was the name of a former division of Accor, which invented the Ticket Restaurant meal voucher and was the world leader in prepaid corporate services. Accor Services was renamed “Edenred” in 2010 and separated from the Accor group. Complainant alleges that the fact Respondent has registered the name of a former division of Accor to offer the same services is very suspect.
Lastly, Complainant sets forth several additional facts for a finding of use of the Domain Names in bad faith: (1) the inconsistent arguments justifying the registration of the Domain Names (transliteration of a Japanese name, website linked to the USA, registrant based in Qatar), (2) providing a Company Registration of a company incorporated five months after the registration of the Domain Names, (3) using a trade name similar to Complainant’s corporate name to allegedly provide the same services, (4) by claiming in filings to have an intent to engage in a different activity from that of Complainant and what was contained in the Company Registration, and (5) that the Domain Name <accorcompany.com> was registered a few days after Complainant sent a demand letter to Respondent.
D. Panel’s Request for a Translation of the Accor Services Company Registration
On July 10, 2015, in response to the Panel’s request, Respondent provided a certified translation of the Company Registration. This translation indicated that on March 26, 2015, Respondent created the company “Accor Services” in Qatar. This translation further indicated the “Commercial Activities” listed on the document were “General Cleaning of Building[s]” and “Hospitality Services”.
On July 15, 2015 Complainant provided its translation of the Company Registration which was identical in pertinent part.
6. Discussion and Findings
In accordance with paragraph 4 of the UDRP, Complainant must prove its assertions with actual evidence demonstrating:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in ACCOR, which predate the registration of the Domain Names.
ACCOR is widely registered on an international basis. Complainant owns numerous trademark registrations throughout the world for ACCOR, including in the United States where Respondent’s Accor Services business will purportedly operate and in Qatar, where Respondent resides. The Panel accepts that the ACCOR mark is widely-known. Such a finding has been confirmed by previous UDRP decisions. See e.g., , Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262; Accor v. 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; Accor v. DreamHost, Long Giang, WIPO Case No. D2014-0196.
The Domain Name <accorcompany.com> contains Complainant’s widely-known trademark ACCOR as a dominant element plus the word “company”. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. While the additional term “company” does not relate directly to hotel services, here, the Panel determines that such a generic term referencing an entity type does not sufficiently distinguish or differentiate <accorcompany.com> from Complainant’s widely-known ACCOR trademark.
The Domain Name <accor.company> contains Complainant’s widely-known trademark ACCOR in its entirety. The addition of the new generic Top-Level Domain (gTLD) “.company” in the Domain Name <accor.company> does not distinguish it from the ACCOR trademark. See Dubizzle Limited BVI v. Ossama Ghazy, WIPO Case No. D2015-0047 (The addition of a gTLD, whether “.com”, “.net” or, in this case, “.company”, does not typically constitute a distinguishing factor).
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Names in question. Generally, if the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, as in this case, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.
A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview 2.0, paragraph 2.1); seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
In this case Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Names. In particular, Complainant asserts that Respondent is not commonly known by the name “Accor”, or is in any way affiliated with Complainant. Likewise, Respondent is not authorized or licensed to use the trademark ACCOR, or to seek registration of any domain name incorporating the said mark. Additionally, Complainant explains that Respondent has not demonstrated use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services.
Thus, the burden shifts to Respondent to demonstrate that he has a right or legitimate interest in the Domain Names.
Respondent contends that the research he has done into existing domain names using the word “accor” allowed him to use the Domain Names. The fact that there are other domain name registrations comprising “accor” combined with a generic term is insufficient evidence to establish that Respondent intended to make a bona fide offering of goods or services.
Respondent asserts that “accor” in Japanese means “agreement” in Arabic and that his incorporation in Qatar allows him to use the Domain Names for his company, Accor Online Services. Respondent’s purported supporting evidence was in the form of the Company Registration, which is a Qatari commercial registration of a company named “Accor Services”. However, when closely examined, Respondent's explanation and evidence unravels and he fails to meet his burden of production. From the translation of the Company Registration, it is apparent that Respondent obtained this document on March 26, 2015, which is after the first cease-and-desist letter was sent on February 27, 2015. Likewise, the disputed domain name <accor.company> was registered after Respondent admits that he received the demand letter from counsel for Complainant.
Moreover, the Company Registration recites that the commercial activity of the business is “hospitality services” and “general cleaning of building[s]”. This commercial activity does not comport with the name of the company, “Accor Online Services”. In contradiction to the intended commercial activity described in the Company Registration, Respondent claimed in his filing on May 18, 2015 that the company was to be “dedicated to other business activities different from the [Complainant’s]”.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Names and Respondent has failed to rebut that showing. For all of the reasons discussed above, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Names in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of what factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where Respondent, by using the Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Bad faith can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Complainant contends that Respondent must have known of Complainant’s widely-known ACCOR trademark when it registered the Domain Names. Respondent, in his response, stated that he researched and found many other domain names that include the word “accor”, for companies in different industries around the world. This research included two companies from France and one from the United States in his May 7, 2015 response. With all of his research, it is improbable that Respondent did not know of the widely-known ACCOR trademark in relation to hospitality services. Furthermore, the Domain Name <accorcompany.com> was registered on March 21, 2015, after the cease-and-desist email and letter were sent on February 27, 2015. Additionally, there were several articles about Accor’s expansion in Qatar beginning in 2013. These articles were occasionally published over the past few years, and it is very possible that a person doing research on the name “Accor” would have seen this and that the company engages in hospitality services and will soon engage in those services in Qatar.
As discussed above, the Company Registration shows that Respondent registered “Accor Services” after the first cease-and-desist letter was sent. Importantly, the inclusion of “General Cleaning of Building[s]” and “Hospitality Services” under the commercial activities section of the Company Registration points to an intention to register and to use the Domain Names in bad faith.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark, by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names 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 Domain Names <accor.company> and <accorcompany.com> be transferred to Complainant.
John C McElwaine
Date: July 28, 2015