WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Leland M. Rutla
Case No. D2015-0912
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Leland M. Rutla of Monroe, Louisiana, United States of America (the "United States").
2. The Domain Name and Registrar
The disputed domain name <ibisinn.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 May 29, 2015. On May 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2015, 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 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 June 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2015.
The Center appointed Cherise Valles as the sole panelist in this matter on June 30, 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.
4. Factual Background
The Complainant operates more than 3,700 hotels, ranging from economy to upscale, in 92 countries around the world, and has been in business for more than 45 years. The group includes notable hotel chains such as Ibis, Novotel, Mercure, Sofitel and Pullman. Ibis, in existence since 1974, has a network of 1,031 hotels in 59 countries, including in North America.
The Complainant is the owner of multiple trademark registrations throughout the world, including in the United States, for the mark IBIS. These include the following:
- United States trademark registration No. 4011274 for IBIS, registered on August 16, 2011, in class 43;
- International trademark registration No. 541432 for IBIS, registered on July 17, 1989 and duly renewed, in classes 38, 39 and 42;
- European Community trademark registration No. 01180934 for the IBIS logo, registered on October 14, 2013, in classes 16, 35 and 43.
The Complainant also operates the domain name <ibis.com>, registered on June 11, 1993.
The disputed domain name <ibisinn.com> was registered on September 20, 2014.
5. Parties' Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, IBIS, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be cancelled, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant owns and operates hotels under the registered trademark IBIS. This trademark is protected worldwide in relation to hotels and restaurant services, as mentioned in Section 4 above. Previous UDRP panels have held the trademark IBIS to be well-known in the field of hotels. See, among others, Accor v. Central American SEO Ltd., WIPO Case No. DCO2011-0011.
The disputed domain name <ibisinn.com> wholly incorporates the IBIS trademark registered by the Complainant. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish that a domain name is identical or confusingly similar for the purpose of the Policy. See, among others, Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150. Although the Respondent has added the generic term "inn" to the Complainant's trademark IBIS, earlier UDRP panels have held that the addition of generic terms to a well-known trademark does not prevent the risk of confusion between the Complainant's trademark and the disputed domain name. See Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047. Moreover, the addition of the generic Top-Level Domain ("gTLD") ".com" is typically irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant's marks. See Accor v. Noldc Inc, WIPO Case No. D2005-0016.
In the light of the foregoing, the Panel finds that the disputed domain name <ibisinn.com> is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant has registered the trademark IBIS in the United States and in other countries around the world. The Complainant submits that the Respondent is not in any way associated with the Complainant and has never received authorization or a license to use the Complainant's IBIS mark in any way or manner, including registering a domain name containing the mark. The Complainant's registration of the trademark IBIS and domain name preceded the Respondent's registration of the disputed domain name by several decades, as indicated in Section 4 above. Previous UDRP panels have 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 domain name can reasonably be claimed (see Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188). Moreover, the Respondent is not commonly known by the name "Ibis" or by the disputed domain name <ibisinn.com>.
The Complainant's IBIS trademark is well known in the United States and around the world. The Respondent must therefore have been aware of the Complainant's legal rights in the trademark IBIS at the time of the registration of the dispute domain name. Given that the disputed domain name incorporates the Complainant's trademark with "inn" also denoting the hospitality industry, the Respondent cannot claim to have been using the trademark IBIS without having been aware of the Complainant's rights to it. This suggests that the Respondent's interests cannot have been legitimate.
Furthermore, the Respondent is not using the disputed domain name <ibisinn.com> to make a bona fide offering of goods or services. The website for the disputed domain name resolves to a website offering online booking services in various parts of the world in competition with the Complainant. A view of the page related to the disputed domain name is attached as Annex 1 to the Complaint. Where the Respondent fails to make a bona fide use of a domain name, the Respondent cannot be found to have any rights or legitimate interests in a domain name under the Policy.
Finally, the Complainant repeatedly attempted to contact the Respondent by sending cease and desist letters and emails, which are attached as Annex 6 to the Complaint. The Respondent did not answer any of these letters or emails. Previous UDRP panels have held that when a respondent does not avail himself of his right to respond to a complainant, it can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its website 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 the respondent's website or location or of a product or service on its website or location.
As stated above, the Respondent does not have any license or permission to make use of the Complainant's trademark. Previous UDRP panels have held that in the absence of such permission, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281.
As indicated in Section 4 above, the Complainant's IBIS trademark was registered decades before the disputed domain name and well-known in numerous countries around the world, including in the United States. The Respondent must have been aware of the existence of the Complainant's rights in the trademarks when registering the disputed domain name. This is supported by the fact that the disputed domain name resolves to a website which offers online hotel booking services. Previous UDRP panels have held that the respondent's knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494.
The Respondent's use of the disputed domain name in such a way constitutes free-riding on the Complainant's goodwill by diverting and misleading consumers looking for a website of or associated with the Complainant. This is evidence of bad faith use of the disputed domain name. See ACCOR v. Olga Pererva, WIPO Case No. D2012-0539. Moreover, in this case, the use of the disputed domain name confusingly similar to the Complainant's mark to offer online hotel booking services in competition with the Complainant is disruptive of the Complainant's business and constitutes bad faith. See Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891. Moreover, as the Complainant asserts, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. Previous UDRP panels have found that this constitutes evidence of bad faith. See L'Oreal v. Chenxiansheng, WIPO Case No. D2009-0242.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 <ibisinn.com> be cancelled.
Date: July 9, 2015