WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA v. Domains By Proxy, LLC, Registration Private / Faisal Alshihry,
Case No. D2017-2052
1. The Parties
The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Faisal Alshihry of Riyadh, Saudi Arabia, self-represented.
2. The Domain Names and Registrars
The disputed domain names <accorgroup.net> and <accorgroup.org> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 24, 2017, 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.
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 of the Complaint, and the proceedings commenced on November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. On November 15, 2017, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until November 27, 2017 under paragraph 5(b) of the Rules. The Respondent did not submit a Response. The Center notified the Parties the commencement of the panel appointment process on December 1, 2017.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 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 Preliminary Procedural Issue: Multiple respondents
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In this case the holder of the disputed domain name <accorgroup.net> is Faisal Alshihry and the holder of <accorgroup.org> is Faisal Alshihry, Domains By Proxy, LLC, Registration Private. Nonetheless, paragraph 10(e) of the Rules gives the Panel discretion to consolidate multiple domain name disputes into a single administrative proceeding in certain circumstances.1
The Complainant requests consolidation here, alleging that "the Respondents appear to be the same person or to be subject to common control." In support of that claim the Complainant submits that:
- the composition of the disputed domain names is identical;
- the disputed domain names resolve to parking pages which are identical;
- the registration date of the disputed domain names is same; and
- the disputed domain names are registered with the same registrar.
Further to the submissions made by the Complainant, the Panel notes that the Registrar confirmed in its verification response to the Center on October 24, 2017, that the underlying registrant of the disputed domain name <accorgroup.org> is Faisal Alshihry.
Thus, the Panel determines that the complaint can proceed against both disputed domain names and hereinafter references to "the Respondent" are references to both Faisal Alshihry and Domains By Proxy, LLC.
5. Factual Background
The facts relevant to the Decision in this case are that:
(1) the Complainant provides hotel and hospitality services by reference to the trade mark ACCOR;
(2) the trade mark ACCOR is the subject, inter alia, of International Trademark Registration No. 480492, registered on November 10, 1983, owned by the Complainant;
(3) it is noteworthy that the Complainant owns and uses the domain name <accorgroup.com> which was registered on June 19, 2005;
(4) the disputed domain names were registered on December 23, 2016;
(5) the disputed domain names resolve to identical pages hosted by the Registrar displaying links to the Complainant's business and to hotel reservation services more generally;
(6) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark; and
(7) a pre-Complaint cease-and-desist letter from the Complainant's representatives to the Respondent was unanswered.
6. Parties' Contentions
The Complainant asserts trade mark rights in ACCOR and submits that the disputed domain names are confusingly similar to its trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain names.
On November 15, 2017, the Respondent sent an email communication to the Center requesting an extension of the Response due date. However, the Respondent did not submit a formal response.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a formal response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its International registration of the trade mark ACCOR and so the Panel accepts that the Complainant has trade mark rights.
The disputed domain names take the trade mark and adds the word "group" and the generic Top-Level Domain ("gTLD"), ".net" in one case and ".org" in the other. Those gTLDs can be disregarded for the purposes of comparison.3 The word "group" is wholly non-distinctive when combined with the trade mark4 and is in fact the descriptive word of choice already used by the Complainant to consolidate its various hotel businesses5. The Panel finds that the disputed domain names are confusingly similar to the Complainant's trade mark and so finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain names.6
Notwithstanding the lack of a formal response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The publicly available WhoIs data for the domain name registrants does not support any finding by the Panel that the Respondent might be commonly known by either of the disputed domain names.
There is no evidence that the Respondent has trade mark rights in the disputed domain names. There is no relationship between the Parties and the Complainant has not authorized the Respondent to use its trade mark.
The evidence accompanying the Complaint shows that the disputed domain names resolve to identical parking pages hosted by the Registrar which display links to the Complainant's business and to hotel reservation services more generally. Such use is not a bona fide offering of goods or services by reference to the disputed domain names, nor is it a legitimate noncommercial or fair use of the disputed domain names.7
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply to the Complainant's contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
"(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 Panel notes the Complainant's evidence of extensive use of the trade mark for some years prior to creation of the disputed domain names. In the circumstances, the Panel finds that Respondent had the Complainant's trademark in mind when it registered the disputed domain names, and that the Respondent's actions fall under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain names to be confusingly similar to the trade mark. The Panel further finds it more likely than not that the Respondent gains commercially (by way of referral fees or otherwise) from the resultant confusion which brings traffic to the webpages to which the disputed domain names resolve.8 The Panel finds that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to online locations by creating a likelihood of confusion with the Complainant's trade mark.9
Accordingly, the Complainant has satisfied the third and final limb 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 names <accorgroup.net> and <accorgroup.org> be transferred to the Complainant.
Debrett G. Lyons
Date: December 17, 2017
1 See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")
4 See, for example, the decision of ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim, WIPO Case No. D2006−1001, concerning the disputed domain name <aragroup.com> where the panel held that: "It is well established that the ".com" extension is to be disregarded for the purpose of determining confusing similarity. Setting aside that extension, the disputed domain name differs from the Complainant's mark by the addition of the addition of "roup" to "arag". The effect, phonetically and visually, is that the disputed domain name reads, in English, as "ara group". The word "group" is generic. It does little to distinguish the disputed domain name from the Complainant's mark. If anything, the Panel's view is that the addition of that word creates a stronger association with the mark. The word "group" might be associated with a professional association, of the kind which the Complainant operates through its business and subsidiaries."
5 The Complainant uses the domain name <accorgroup.com> to provide information about its hotel services under a number of names including Raffles, Sofitel, Onefinestay, Fairmont, Mgallery, Pullman, Swissotel, Grand Mercure, Novotel, Mama Shelter, Mercure and Ibis.