WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Xu Guo Xing
Case No. D2017-0192
1. The Parties
The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Xu Guo Xing of Jinan, Shandong, China.
2. The Domain Names and Registrars
The disputed domain name <accor.shop> is registered with West263 International Limited. The disputed domain name <accor.store> is registered with Chengdu West Dimension Digital Technology Co., Ltd.
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2017. On February 1, 2017, the Center transmitted by email to West263 International Limited and Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrars") a request for registrar verification in connection with the disputed domain names. On February 3, 2017, the Registrars transmitted by email to the Center their verification responses respectively confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding annexes to the Complaint, the Complainant clarified annexes which it intended to submit on February 6, 2017.
On February 6, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017.
On February 27, 2017, the Complainant forwarded an email in English from the Respondent to the Center. The Respondent asserted that "I'm accor.shop accor.store domain name registration. I want to send this to you two domain names. Are you willing to give me compensation fees?"
On March 8, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Francine Tan as the sole panelist in this matter on March 14, 2017. 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, also known under the trade name Accorhotels, is known across the world for its line of mid‑scale hotels, and is also a major player in upscale and luxury hospitality services. The Complainant has operated its business for more than 45 years. It has more than 4,000 hotels in 92 countries worldwide and around 570,000 rooms, "from economy to upscale".
The Accorhotels Group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS. In the Asia Pacific region, the Complainant operates up to 647 hotels with 123,060 rooms. In China, the Complainant operates 174 hotels with 41,265 rooms.
The Complainant owns and operates several hotels under the trade mark ACCOR, which it asserts is a well‑known trade mark. The trade mark is protected in many countries in relation to hotel and restaurant services. The ACCOR trade mark is registered in China (inter alia, via International registration No. 727696, dating from December 28, 1999, covering goods and services in Classes 16, 39 and 42; and International registration No. 742032, dating from August 25, 2000, covering goods and services in Class 38). In addition, the Complainant owns and operates domain names reflecting its ACCOR trade mark which it uses to promote its services, including <accor.cn> and <accor.com>.
The disputed domain names <accor.store> and <accor.shop> were registered on September 30, 2016 and September 26, 2016, respectively. The disputed domain names each resolves to an inactive page. On November 16, 2016, the Complainant sent a cease-and-desist letter to the Respondent via registered mail and email, asking the latter to transfer the disputed domain names. The Complainant states that the Respondent responded in Chinese, "pretending not to understand English". The Complainant sent several reminders to the Respondent but did not receive any reply.
5. Parties' Contentions
1) The disputed domain names are confusingly similar to the Complainant's ACCOR trade mark in which the Complainant has rights. They reproduce the Complainant's ACCOR trade mark in its entirety. The addition of the generic Top-Level Domains ("gTLDs") ".store" and ".shop" does not have any impact on the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant's trade mark. On the contrary, given the generic meaning of the words "store" and "shop" and the Complainant's online presence, the addition of the gTLDs ".store" and ".shop" adds confusion, as Internet users may mistakenly believe that the websites linked to the disputed domain names are operated by the Complainant.
2) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register its ACCOR trade mark or to seek registration of any domain names incorporating the said trade mark. The Respondent has no prior rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the name "Accor". The registration of the ACCOR trade mark precedes the registration date of the disputed domain names by many years. The ACCOR trade mark is so famous that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names. There is no evidence of noncommercial or fair use of the disputed domain names.
Further, it appears that the Respondent is engaged in cybersquatting, since it registered around 149 domain names, a number of which incorporate brand names, e.g., <galerieslafayette.shop>, <ralphlauren.shop>, <tripadvisor.shop>, <vogue.shop>, <marlboro.shop> and <kleenex.shop>.
3) The disputed domain names were registered and are being used in bad faith. It is not plausible that the Respondent was unaware of the Complainant when it registered the disputed domain names. The Complainant is well known throughout the world, including in China where the Respondent is located. The ACCOR mark has been recognized as internationally well known in a number of UDRP panel decisions (e.g., Accor v. DreamHost, Long Giang, WIPO Case No. D2014-0196; Accor and SoLuxury HMC v. Fundacion Private Whois, WIPO Case No. D2012-1654; Accor and Soluxury HMC v. "m on", WIPO Case No. D2012-2262). The disputed domain names, which entirely reproduce the Complainant's ACCOR trade mark, is such that it is not possible that the Respondent did not have the Complainant and the latter's ACCOR trade mark in mind when registering the disputed domain names. A quick trademark search or other search using the Google or other search engines would have revealed to the Respondent the existence of the Complainant and its ACCOR trade mark.
The state of inactivity of the disputed domain names does not mean that the domain name registrations in this case are used in good faith. One has to look at all the circumstances of the Respondent's behavior and surrounding circumstances. The fact that the Complainant's ACCOR trade mark has a strong reputation and is widely known; the fact that the Respondent provided no evidence of any actual or contemplated good faith use by it of the disputed domain names; the Respondent's active steps to conceal its true identity by operating under a name that is not a registered business name; and the fact that it provided false contact details in breach of the Registration Agreement – all of these circumstances point to bad faith use. The reproduction of a famous mark 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.
Apart from the February 15, 2017 email which the Complainant received from the Respondent and thereafter forwarded to the Center, no response was made by the Respondent in this proceeding.
6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
The Registration Agreements are in Chinese. The Complainant filed the Complaint in English and requested that English be the language of the proceeding. The Complainant argued that paragraph 11 of the Rules is intended to ensure fairness in the language selection by giving full consideration to the respective parties' level of comfort with each language, the expenses that may be incurred, the possibility of a delay in the proceeding if translations were required. The Complainant is located in France and has no knowledge of Chinese. To require Chinese translations would mean higher costs for the Complainant. This places a burden on the Complainant which is significant.
On the other hand, the disputed domain names include only Latin characters, which strongly suggests that the Respondent has knowledge of language(s) other than Chinese. Moreover, English is the primary language for international business.
Paragraph 11(a) of the Rules provides: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Panel finds that the Respondent is sufficiently familiar with English. Bearing in mind the need to ensure that the administrative proceeding takes place with due expedition (paragraph 10(c) of the Rules), the Panel determines that it would be appropriate for English to be the language of the proceeding. The composition and choice of the disputed domain names and also of the other domain names that the Respondent has registered (i.e., those bearing well-known names/brand names) are strong indicators that the Respondent is probably familiar and comfortable with the English language. The Respondent's email response in English also indicates that the Respondent has an understanding of English, albeit its ability to communicate in English may not be perfect. The Panel therefore has little reason to believe that the Respondent would be prejudiced if English were the language of the proceeding. To impose a requirement for the Complainant to translate all the documents and evidence into Chinese would be a significant burden in the circumstances and would delay the proceeding. The Respondent could have chosen to file its Response in Chinese but did not. Neither did it comment on the issue of the language of the proceeding.
The Panel therefore determines that English is to be adopted as the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the ACCOR trade mark. The disputed domain names differ from the ACCOR trade mark only by the feature of the gTLDs ".shop" and ".store". There is no other distinguishing or differentiating element in the disputed domain names which serve to remove the identity or confusing similarity with the Complainant's ACCOR trade mark. It is well established that gTLDs generally have no relevance to the consideration of the issue of whether the disputed domain names are identical or confusingly similar to the Complainant's trade mark since they constitute a technical requirement of a domain name registration.
The Panel therefore finds that the disputed domain names are identical to the Complainant's ACCOR trade mark. The first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. It includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services; or
(ii) being commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant is required to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names (see paragraph 2.1 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Once the Complainant has established a prima facie case, the burden shifts to the Respondent to submit evidence which demonstrates it has rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is indeed no evidence that the Respondent is commonly known by the disputed domain names or the name "Accor". It would indeed be a rather odd choice for a Chinese entity or individual to adopt an unusual name like "Accor" which has no meaning. The natural question that comes to mind is why the Respondent chose the name "accor" for its domain name registrations. However, the Respondent did not offer any explanation for its choice of the disputed domain names, or to show the basis for its rights and legitimate interests in the disputed domain names. Neither is there evidence of a legitimate noncommercial or fair use of the disputed domain names by the Respondent in connection with a bona fide offering of goods or services. The Respondent has in fact not used the disputed domain names but appeared to be rather quick to want to "offload" the disputed domain names if it were "compensated". There is nothing in the Respondent's email response which demonstrates it has rights or legitimate interests in the disputed domain names. The Respondent failed to file a response and to show, with evidence, that it has rights or legitimate interests in the disputed domain names.
In the circumstances, the Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees that the ACCOR trade mark may be considered as among the well known in its industry. It finds that the disputed domain names were registered and used in bad faith, as the circumstances fall within the ambit of paragraph 4(b) of the Policy. The fact that the Complainant's ACCOR mark is well known is one of the "cumulative circumstances" from which bad faith may be found. Paragraph 3.2 of the WIPO Overview 2.0 states that "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".
The Panel is persuaded that the Respondent must have known of the Complainant and its ACCOR trade mark, and the Respondent's aim in registering the disputed domain names was probably to attract and divert Internet traffic to its website by creating confusion with the Complainant's ACCOR mark. Notwithstanding the passive use of the disputed domain names by the Respondent, the Panel finds that the disputed domain names have been registered and used in bad faith. The disputed domain names are so obviously connected with the well-known mark of the Complainant that its registration and "use" by the Respondent which has no connection to the trade mark and the Complainant certainly suggests opportunistic bad faith. (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC., WIPO Case No. D2006-0303.) The Panel also draws an adverse inference from the fact that the Respondent is associated with a number of other domain name registrations in which famous names/marks have been incorporated (i.e., <galerieslafayette.shop>, <ralphlauren.shop>, <tripadvisor.shop>, <vogue.shop>, <marlboro.shop> and <kleenex.shop>).
The Panel concludes that the third element of paragraph 4(a) of the Policy has been met.
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 names <accor.shop> and <accor.store> be transferred to the Complainant.
Date: March 20, 2017