WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Domain Administrator, See PrivacyGuardian.org / fly fish
Case No. D2017-1095
1. The Parties
The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“USA” or “US”) / fly fish of California, USA.
2. The Domain Name and Registrar
The disputed domain name <accorhhotels.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9, 2017.
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 June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 10, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant operates more than 4,000 hotels in 95 countries worldwide, out of which in the USA 28 hotels with more than 11,000 rooms.
The Complainant is owner of the US Trademark Registration No. 4270310 for the word mark ACCORHOTELS, registered on January 8, 2013 for services of Classes 35, 39 and 43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”).
Since April 30, 1998 the Complainant owns the domain name <accorhotels.com> for promotion of its services.
The disputed domain name was registered on February 14, 2017 and at the time of filing of the Complaint it redirected Internet traffic towards the official website of the Complainant. At the time of rendering of this administrative decision the website at the disputed domain name was inactive.
5. Parties’ Contentions
The Complainant contends that apart from letter “h” and the generic Top-Level Domain (“gTLD”) “.com” the disputed domain name is identical on its face to the Complainant’s ACCORHOTELS trademark. Mere addition of the letter “h” in this case amounts to a practice commonly referred to as “typosquatting” and creates virtually identical sign to the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the worldwide fame of the Complainant’s ACCORHOTELS trademark, the Respondent was most likely aware of it at the time of registering the disputed domain name.
The Complainant states that redirection of the disputed domain name to the Complainant’s official website demonstrates the Respondent’s intent to abusively benefit from the Complainant’s fame for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark ACCORHOTELS, and for the purpose of this proceeding, the Panel establishes that the Complainant’s US Trademark registration No. 4270310 satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the ACCORHOTELS mark, the Panel next assesses whether the disputed domain name <accorhhotels.com> is identical or confusingly similar to the ACCORHOTELS trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.
The disputed domain name contains the Complainant’s ACCORHOTELS trademark in its entirety. The applicable gTLD suffix in the disputed domain name, “.com” should in relation to this administrative proceeding be disregarded.
The only element in the disputed domain name other than the widely-known ACCORHOTELS trademark of the Complainant is addition of the letter “h” between the word elements “accor” and “hotels”, which though does not significantly affect the appearance or pronunciation of the disputed domain name, in fact creates an almost identical sign to the Complainant’s trademark.
In view of this Panel, this is a textbook example of the practice known as “typosquatting”, which e.g. relies on mistakes such as typos made by Internet users when inputting a website address into a web browser.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name <accorhhotels.com> is confusingly similar to the ACCORHOTELS trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark ACCORHOTELS.
The Complainant has never authorized the Respondent to use its ACCORHOTELS trademark in any way, and the Complainant’s prior rights in the ACCORHOTELS trademark long preceded the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-knows trademark by an unaffiliated entity can itself create a presumption of bad faith.
The Complainant’s ACCORHOTELS trademark is widely known, and the disputed domain name is reproducing it in its entirety. This leads this Panel to conclude that the Respondent must have been aware of the Complainant’s trademark at the time of obtaining the disputed domain name and choose to register it in order to exploit the reputation behind the ACCORHOTELS trademark without any authorization or rights to do so.
In line with section 3.1.4 of the WIPO Overview 3.0, UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.
The fact that the Respondent redirected the disputed domain name to the Complainant’s official website while retaining control over the redirection is in the opinion of this Panel clear evidence of the Respondent’s intent to abusively profit from the reputation of the Complainant’s ACCORHOTELS trademark.
At the time of rendering of this Decision the disputed domain name was inactive.
According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence or actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In addition to facts discussed above, the Respondent’s failure to submit a response and to respond to repeated communications from the Complainant and its initial use of the identity shield in view of this Panel further supports presumption of bad faith disregard for the trademark rights of others.
It is difficult to see and find any reason for the Respondent’s use of the domain name privacy service other than to make it as difficult as possible for the Complainant to identify the registrant of the disputed domain name and protect its trademark rights against cybersquatting, which does not reflect good faith.
In view of this Panel, all the above discussed facts and circumstances unquestionably support applicability of paragraphs 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <accorhhotels.com> be transferred to the Complainant.
Date: July 22, 2017