WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang
Case No. D2017-1322
1. The Parties
The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Zhichao Yang of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <hotelibisbudget.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 July 10, 2017. On July 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 July 11, 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 July 13, 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 July 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2017.
The Center appointed J. Nelson Landry as the sole panelist in this matter on August 9, 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 is a French multinational hotel group that has been operating economic and mid-scale hotels as well as providing luxury hospitality services for more than 45 years. Its 4,000 hotels comprising 570,000 rooms are located in 95 countries and are operated under different groups of trademarks namely PULLMAN, NOVOTEL, MERCURE and IBIS, the later presently involved in this proceeding in respect of different brands all incorporating the IBIS trademark namely 1,079 IBIS Hotels in 65 countries, 500 IBIS Styles Hotels around the world as well IBIS Budget Hotels at over 500 addresses worldwide.
The Complainant owns many registered trademarks incorporating its brand trademark IBIS as well as others such as HOTEL IBIS, IBIS BUDGET HOTELS (the “IBIS Trademarks”).
IBIS BUDGET HOTELS (international)
September 13, 2011
HOTEL IBIS (international)
June 17, 1977
8,16, 20, 21, 39 and 42
HOTEL IBIS (French)
August 21, 1986
July 17, 1989
38, 39 and 42
Furthermore, the Complainant owns and operates domain names which reflect some of its IBIS Trademarks namely <ibis.com>, registered on June 11, 1993, <hotelibis.com>, registered August 19, 1997, and <ibisbudgethotel.com>, registered on September 12, 2011.
The disputed domain name was registered on November 1, 2016 and at the time of this decision, resolves to a website with pay-per-click advertisements related to hotels and hotel services. On November 22, 2016, the underlying registrant had not yet been disclosed. The Complainant sent to the privacy service a cease-and-desist letter by registered mail and email claiming that the disputed domain name to be confusing with its three IBIS Trademarks mentioned hereinabove, requesting that the privacy service provide the identity and contact details of the underlying registrant and requesting that the latter cease to use the disputed domain name and transfer same to the Complainant free of charge. Despite numerous reminders by the Complainant, the Respondent never replied. Pursuant to another cease-and-desist letter to the Registrar and web host requesting the latter to block the disputed domain name and remove the website associated to the said disputed domain name, the webhost subsequently notified the Complainant that the disputed domain name had been blocked on its network. The Complainant did not receive any further communication from the privacy service nor from the underlying registrant.
The Complainant states that it is not in any way affiliated with the Respondent and has not authorized said Respondent to use its IBIS Trademarks nor to seek and obtain registration of the disputed domain name or other domain names incorporating any of its IBIS Trademarks.
The Complainant further states that the Respondent is neither known by the name IBIS, HOTEL IBIS and/or IBIS BUDGET HOTELS and furthermore, that the Respondent is not authorized or licensed by the later to use any of its IBIS Trademarks in any way.
Pursuant to verifications of the web, the Complainant has found that the Respondent is the owner of 2,273 domain names, some of which include variations of famous trademarks, namely <amercianexspress.com>, <aqatarairways.com> and <barclycards.com>.
5. Parties’ Contentions
The Complainant represents that it has rights and worldwide reputation in its IBIS Trademarks registered since at least 1977 and that they are used in association with four thousand hotels in 95 countries over the past 45 years and thereby enjoy an international reputation. It further represents that the disputed domain name incorporates its IBIS and HOTEL IBIS Trademarks totally and its IBIS BUDGET HOTELS Trademark with the inversion of the term “hotel” and “ibis” applied with the inversion of the letter “s” thereby generating confusion with its IBIS Trademarks.
With references to four UDRP decisions wherein the panel stated that its IBIS Trademarks are very well-known in the field of hotel operations at the international level and the Complainant submits that these rights and facts are sufficient to establish that the disputed domain name is identical or confusingly similar to its IBIS Trademarks. The Complainant further claims that neither the deletion of the letter “s” from the word “hotel” nor the rearrangement of the terms “hotel” and “budget” in the disputed domain name nor the addition of the suffix “.com” as held in UDRP decisions cited diminishes in any way the confusing similarity of the disputed domain name with its well-known IBIS Trademarks.
Pursuant to its statement of absence of any affiliation of the Respondent with the Complainant or authorization with the latter to seek registration of the disputed domain name incorporating its IBIS Trademark, the Complainant submits that the Respondent has no prior rights or legitimate interests in the disputed domain name since the Respondent is neither known by the name IBIS or HOTEL IBIS or IBIS BUDGET HOTEL with which there is no affiliation with the Complainant nor benefits from an authorization or license by the later to use any of its IBIS Trademarks.
The Complainant further claims the absence of any demonstration of use or preparation to use the disputed domain name in connection with a bona fide offering of goods and services since the Internet visitors will observe that the website associated with the disputed domain name resolved to a parking place before going inactive and active again on one hand and the Respondent’s absence of noncommercial or fair use of the disputed domain name on the other hand.
The absence of rights and legitimate interests is further confirmed by the use of a privacy service and the fact that the website resolved to a parking page displaying commercial links related to services in the hotel industry, competitors to hotels of the Complainant, where Internet visitors are directed to a parking page with pay-per-click to likely generate revenues. The Complainant concludes that all these representations and activities confirm the absence of inference that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name.
The Complainant further represents the Respondent’s behavior in the absence of any right or legitimate interest in the disputed domain name is corroborated by the Complainant finding that the Respondent is the owner of 2,273 domain names including variations of famous trademarks, such as <americianexpress.com>, <aqatarairways.com> and <barclycards.com>.
The Respondent, by registering the disputed domain name with a sole difference in the absence of the letter “s” in its IBIS BUDGET HOTELS Trademark and the inversion of the sequence of the words, indicates that the Respondent seeks to take advantage of Internet users and that the typographical errors are indicative of the Respondent engaging in typosquatting.
The Complainant represents with the above facts that it is implausible that the Respondent was unaware of the Complainant’s Trademarks when it registered the disputed domain name and that such registration in the absence of any right or legitimate interest in indicative of bad faith. See Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
The Complainant further submits that by reason of the well-known reputation of its IBIS Trademarks throughout the world, and the fact that panels in earlier UDRP decisions had considered its IBIS Trademarks widely known, and the similarity of the IBIS Trademarks and the disputed domain name, in addition with the fact that the said domain name redirects Internet visitors toward a page with commercial links related to hotel services such as booking services, is indicative of use of the disputed domain name in bad faith since as the Complainant further represents, it is impossible that the Respondent was not aware of the Complainant’s Trademarks.
The Complainant states that the knowledge of the IBIS Trademarks at the time of the registration of the disputed domain name suggests bad faith. See Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 and ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287. Similarly it has been held by panels in earlier UDRP decisions that the mere deletion of a letter such as “s” from the term “hotel” and placing the latter at the beginning of the disputed domain name is a form of typosquatting which is in itself evidence of bad faith.
The Complainant claims that in the absence of any license or authorization from the Complainant to use its well-known IBIS Trademarks, one cannot claim any actual or contemplated bona fide or legitimate use of the disputed domain name. Reiterating its view of the Respondent’s awareness of its IBIS Trademarks and the substantial worldwide reputation associated with its IBIS Trademarks, the Complainant relies on UDRP panels that have held in earlier decisions that the use of a domain name to divert Internet users and to direct them to a web page providing revenues through pay-per-click links on the one hand and furthermore, taking advantage of the Complainant’s IBIS Trademarks to generate profits through the use of its well-known Trademark to attract Internet users to its website for commercial gain, on the other hand, both constitute a use of the disputed domain name in bad faith. See L’Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231.
The Complainant concludes in submitting that the registration of the disputed domain name which prevents the Complainant from such use of its IBIS Trademark corresponds to evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(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.
The Complainant has made very elaborate and detailed representations and observations in respect of these three elements and furthermore is claiming support of said representations in references to 33 UDRP panels’ decisions in respect of several elements and points developed and has pursuant to its investigation located and found that the Respondent has registered 2,273 domain names as previously mentioned.
A. Identical or Confusingly Similar
The Complainant, as well established, owns a registration rights in respect of its four IBIS Trademarks and furthermore through their extensive use since 1977 enjoys worldwide goodwill associated with same. Considering that the disputed domain name incorporates totally the IBIS, HOTEL IBIS Trademarks and differs from the IBIS BUDGET HOTELS Trademark by the rearrangement of the three terms and the deletion of the letter “s” to the term “hotels” in this third Trademark registration, the Panel finds that the disputed domain name is confusingly similar to the three above-mentioned registered IBIS Trademarks of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has discharged its burden of prima facie evidence showing that the Respondent has no rights or legitimate interests in the disputed domain name. It has proven that there was no affiliation or business relationship with the Respondent, it has never provided any authorization or license to the Respondent to register the disputed domain name and that the Respondent was not known by the name IBIS or other names incorporating same. The burden of production shifts to the Respondent who did not respond nor show that it had such rights. Finally the Complainant has shown that the use of the website associated at the address of the disputed domain name generated pay-per-click revenues confirming a commercial use of the disputed domain name. See Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529. All of these representations are well supported by earlier UDRP decisions.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
In considering the extensive use of its IBIS Trademarks in association with thousands of hotels in 95 countries and the possibility of locating these Trademarks in conducting a Google search, the absence of awareness of the IBIS Trademarks by the Respondent is inconceivable to this Panel and this view is comforted by the evidence of the Respondent’s behavior that has registered some 2,273 domain names and the evidence that the Respondent was involved in at least four UDRP cases involving well-known trademarks and in which the panel concluded that the registration and use of the disputed domain names was in bad faith.
The Complainant has also clearly shown that there is no evidence of rights or legitimate interests for the Respondent and that the website at the address of the disputed domain name redirects the Internet visitors to links to services related to those of the Complainant and further confirming the Respondent’s awareness of the Complainant’s Trademarks. The Panel finds that the disputed domain name was registered in bad faith and that the use of a privacy shield thereby resorting to a deliberate concealment of the Respondent’s identity confirms the bad faith in its actions. The Panel cannot overlook these facts and behavior of the Respondent when in one’s application to register a domain name, under paragraph 2 of the Policy, represents and warrants to the Registrar that, to the registrant’s knowledge, the registration of the domain name will not infringe the rights of any third party. See Compagnie Gervais Danone v. Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901. The Panel, therefore, upon considering such evidence confirms that the disputed domain name was registered in bad faith.
The Complainant has already proven that the disputed domain name is confusingly similar with its IBIS Trademarks and that, by reason of such confusion, it is diverting Internet users to its website at the address of the disputed domain name where the visitor will see advertisement of activities that can easily be associated with those of the Complainant and sponsored by the latter. In so diverting Internet users to the website associated with the disputed domain name, the Respondent is benefiting from pay-per-click revenue and profits which is in this Panel’s view evidence of use of the disputed domain name in bad faith. See F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956. UDRP panels have determined that “the use of a domain name to point to a website that offers links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith”; see Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025.
The Panel adopts these views and determination and finds that the Respondent has used the disputed domain name in bad faith.
The third criterion 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 name, <hotelibisbudget.com>, be transferred to the Complainant.
J. Nelson Landry
Date: August 21, 2017