WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Domains By Proxy / David West
Case No. D2017-1409
1. The Parties
The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Domains By Proxy, Scottsdale, Arizona, United States of America./ David West of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mail-accor.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2017. On July 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 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 27, 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 31, 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 August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2017.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on September 6, 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 well-known hotel chain operating worldwide with more than 4,100 hotels across the globe.
The Complainant has registered the trademark ACCOR globally and particularly owns the International trademark No. 727696 registered on December 28, 1999, the International trademark No. 480492 registered on November 10, 1983, the International trademark No. 1128307 registered on February 20, 2012, and the United States of America trademark no. 2838984 registered on May 4, 2004.
The Complainant has registered a number of domain names which incorporate the trademark ACCOR.
The Respondent registered the disputed domain name in January 8, 2017. The disputed domain name does not resolve to any active website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark ACCOR. The Complainant operates hotels under the trademark ACCOR which is considered well known and is registered worldwide. The disputed domain name reproduces the trademark ACCOR in its entirety and this is considered sufficient to render the disputed domain name identical or confusingly similar to a Complainant's registered trademark. The generic term "mail" does not eliminate confusion but on the contrary reinforces the impression that the disputed domain name is run by the Complainant. The generic Top-Level Domain ("gTLD") ".com" should not be taken into consideration when assessing similarity. Consequently, the disputed domain name could mislead Internet users to thinking that it is associated with the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and was not authorized by the latter to use the trademark ACCOR. The Respondent does not have prior rights or legitimate interest in the disputed domain name and cannot pretend that it planned to conduct a legitimate activity through the disputed domain name as the trademark ACCOR is well-known. Furthermore, the Respondent is not known by the name "Accor" and did not demonstrate use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to an inactive page. In addition, an email server has been configured on the disputed domain name, which causes a risk of phishing. The Respondent has registered the disputed domain name with a privacy shield service and did not answer the cease-and-desist letter sent by the Complainant.
The Complainant contends that the disputed domain name is registered in bad faith. It is unthinkable that the Respondent lacked knowledge of the Complainant's trademark and activities as the Complainant is well‑known and its trademark ACCOR is established as being a well-known trademark. Furthermore, it is the Respondent's duty to ascertain that it has not infringed on a third party's intellectual property rights when registering its domain name and a simple search would have revealed the existence of the trademark ACCOR. The Complainant contends that the disputed domain name is being used in bad faith. There is no authorization by the Complainant to use the trademark ACCOR and the high level of similarity will cause diversion of Internet traffic. Furthermore, there's passive holding of the disputed domain name and an active email server is set-up in connection with the disputed domain name, which may indicate phishing activities by the Respondent. It is therefore believed that the motivation behind registering the disputed domain name is to benefit from the reputation of the Complainant's trademark. There is also a likelihood that the Respondent registered the disputed domain name in order to prevent the Complainant from using its trademark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a number of trademark registrations for the trademark ACCOR registered internationally and in the United States of America. The Panel is satisfied that the Complainant has established its ownership of the trademark ACCOR.
The disputed domain name comprises the Complainant's trademark ACCOR combined with the generic term "mail", which does not eliminate the confusing similarity with the trademark ACCOR. The gTLD ".com" should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The element of registration and use in bad faith is evidenced by the fact that the trademark ACCOR is well‑known. Hence, it must be that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant's mark with the aim of diverting traffic, by creating the impression of being affiliated with the Complainant. Furthermore, there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the domain name.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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, <mail-accor.com> be transferred to the Complainant.
Date: September 10, 2017