WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. ADCO Build
Case No. D2015-2337
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is ADCO Build of North Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <accorhotel-au.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 December 22, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the disputed domain name. On December 22, 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. On January 6, 2016, the Complainant filed an amended Complaint.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2016.
The Center received email communications from a third party to this proceeding on January 19, 20 and 27, 2016 (discussed infra).
The Center appointed Neil J. Wilkof as the sole panelist in this matter on February 1, 2016. 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 inter alia is registered as the owner of the following trademarks:
International trademark registration no. 1103847 for the mark ACCORHOTELS, registered on December 12, 2011, designating Australia, covering services in classes 35, 39 and 43.
Australian trademark registration no. 716192 for the mark ACCOR, registered on July 30, 1999, covering services in class 36.
Australian trademark no. 874098 for the mark ACCOR, registered on March 14, 2002, covering services in classes 39 and 42.
(ACCORHOTELS and ACCOR collectively, the Mark)
The disputed domain name, <accorhotel-au.com> (the “Disputed Domain Name”) was registered on July 7, 2015.
5. Parties’ Contentions
The Complainant is the world leader in the field of budget and mid-range-priced hotels as well as enjoying a prominent position in the market for upscale and luxury hotel services. The Complainant has been engaged in hotel services for over 45 years. It operates more than 3,700 hotels in 92 countries world-wide, including in Australia, where it operates more than 203 hotels across the continent. The Complainant employs approximately 8,395 employees, who are engaged in the ownership, leasing and management of hotels. As well, the Complainant has a franchise network of hotels in Australia.
Previous UDRP panels have found the mark ACCOR to be a famous mark (see, e.g., Accor v. Domains By Proxy, LLC/Abdulrahman Almarri, WIPO Case No. D2015-0777, and the cases cited therein).
The Complainant became aware that the Respondent had registered the Disputed Domain Name, which at that time resolved to a Pay-Per-Click (PPC) parking page containing related links. In an effort to settle the matter amicably, the Complainant sent a cease-and-desist letter to the Respondent on October 23, 2015, requesting that the Respondent cease its use of the Disputed Domain Name and transfer it to the Complainant without charge. Having received no response from the Respondent, the Complainant sent a reminder. Once again, no response was received, although the website to which the Disputed Domain Name resolved was subsequently deactivated. The Complainant then filed the instant URDP action, seeking transfer of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
According to paragraph 4(a) of the Policy, the Complaint must prove the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
Preliminary Matter: Respondent Identity
As stated in the Procedural History, the Center received three communications in this matter from a third party to the dispute. This party, a company with a name very similar to that of the Respondent, stated that it had received the Center’s formal notice of the Complaint by courier and that the Respondent has apparently “fraudulently” used its mailing address when registering the Disputed Domain Name.
In light of these communications (and the Respondent’s default), the Panel finds it more likely than not that the Respondent’s name is false, and the (unknown) registrant uses the name “ADCO Build” to mask its true identity and create the false impression that the above-referenced third party is the registrant of the Disputed Domain Name.
In any event, for the purposes of decision implementation, if a transfer is ordered in this case, and in light of the definition of “Respondent” in the Rules, the Panel finds it appropriate that “ADCO Build” remain the name of the Respondent in this Decision.
A. Identical or Confusingly Similar
The Disputed Domain Name incorporates the ACCORHOTELS mark in its entirety except for the letter “s”. This difference is immaterial. Slightly altering the mark of the complainant in a disputed domain name in such a manner has been called “typosquatting”. Previous UDRP panels have found such typosquatting to create confusing similarity to the mark of the complainant. See, e.g., Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692. That is the situation here.
The conclusion is the same should it be claimed that the relevant mark for purposes of determining confusing similarity is ACCOR. It is recognized that a person encountering a name or mark is likely to give greater attention to the dominant or principal part thereof. Here, as stated, the first part of the Disputed Domain Name is identical to the ACCOR mark. Moreover, the word “hotels” has no distinctive power under the circumstances, given the fact that the Complainant is primarily engaged in hotel and hospitality services.
None of the other components of the Disputed Domain Name serves to distinguish it from the ACCOR mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” lacks any distinctive power in determining whether a mark is confusingly similar to a disputed domain name. The addition “au” is simply the ISO 3166-1 alpha-2 designation for Australia, while the use of the hyphen between the words of the Disputed Domain Name is merely an artifact of punctuation.
As stated by the panel in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, “neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. Having regard to the ACCOR mark, the same conclusion applies to the instant situation.
Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the ACCOR and ACCORHOTELS marks.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof. The Respondent’s name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark or the Disputed Domain Name. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark or that the Respondent has ever been authorized to serve as a franchisee of the Complainant.
Having regard to the three non-exclusive circumstances set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith registration and use on the part of the respondent, as follows:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 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 the respondent’s website or location.
Under the circumstances, the Respondent’s selection of the Disputed Domain Name supports the conclusion that the Respondent has acted in bad faith.
The Respondent registered the Disputed Domain Name only in 2015, after the Complainant registered and used the Mark. Previous UDRP panels have found ACCOR to be a famous mark. As stated by the panel in The American Automobile Association Inc. v. Sompop Padungkijjaroen, WIPO Case No. D2012-2168, “[g]iven the distinctive nature of the Complainant’s AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant”. These words apply equally in the instant situation.
With respect to the use of the Disputed Domain Name, the Complaint contains the screenshot of a PPC parking page, dated March 11, 2015, to which the Disputed Domain Name resolved as of that date. Such use of the Disputed Domain Name by the Respondent indicates an intention at that time to attract Internet users to its website for commercial gain by taking advantage of the Complainant’s reputation in connection with the Mark. See WIPO Overwiew of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6, which states that use of a domain name to post parking and landing pages or PPC links is viewed, except in certain limited circumstances, as unfair use of the complainant’s mark.
As stated by the Complainant, following receipt of a cease-and-desist letter, the webpage to which the Disputed Domain Name resolves was deactivated. This does not change the conclusion that the Respondent has acted in bad faith. Prior panels have recognized that, under appropriate circumstances, the requirements of paragraph 4(a)(iii) are satisfied when there is passive bad faith. WIPO Overview 2.0, paragraph 3.2, sets out the Consensus View as follows:
“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g.,to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.”
Applying this view to the facts of the instant case supports the conclusion that the Respondent has engaged in passive bad faith with respect to the Disputed Domain Name. The ACCOR mark has been found by previous panels to be a well-known mark. No response to the Complaint was filed by the Respondent. When the Written Notice of the Complaint was sent to the address that appears on the registration information of the Disputed Domain Name, the recipient advised that the information was apparently “fraudulently used by an unknown third party. [The recipient] has not had any involvement in relation to the registration or otherwise of the disputed domain name “accorhotel-au.com”.”
Based on all of the foregoing, 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 <accorhotel-au.com> be transferred to the Complainant.
Neil J. Wilkof
Date: February 9, 2016