WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor S.A. v. Whois Agent Domain Protection Services, Inc. / Domain Administrator, Matama
Case No. D2017-2267
1. The Parties
The Complainant is Accor S.A. of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Whois Agent Domain Protection Services, Inc. of Denver, Colorado, United States of America / Domain Administrator, Matama of Singapore.
2. The Domain Names and Registrar
The disputed domain names <ibisbirminghamcentre.com>, <ibisbirminghamnewstreetstation.com>, <ibisbristolcentre.com>, <ibisedinburghcentresouthbridge.com>, <ibisedinburghpark.com>, <ibisglasgowcitycentre.com>, <ibisglasgow.com>, <ibisleedscentre.com>, <ibislondonblackfriars.com>, <ibislondoncity.com>, <ibislondonearlscourt.com>, <ibislondoneustonstation.com>, <ibislondonexcel.com>, <ibislondonexceldocklands.com>, <ibislondonheathrowairport.com>, <ibislondonhounslow.com>, <ibislondonwembley.com>, <ibismanchestercentrepollardstreet.com>, <ibismanchestercentreportlandstreet.com>, <ibismanchesterportlandstreet.com>, <ibismanchestersalfordquays.com>, <ibisportsmouthcentre.com>, <mercuremanchesterpiccadilly.com>, <novotellondonwest.com> and <pullmanstpancras.com> are registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 15 and 30, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 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 December 5, 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 December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on January 17, 2018. 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 world leader in the economic and mid-scale hotel market, and a major player in upscale and luxury hospitality service. It operates thousands of hotels in 95 countries under various brands, using a number of trademarks that include IBIS, MERCURE, NOVOTEL and PULLMAN. These are well-known trademarks, protected worldwide, particularly in relation to hotels and restaurant services. For example, the Complainant owns the following trademark registrations:
IBIS - International trademark No. 541432, registered on July 17, 1989, duly renewed, covering services in classes 38, 39 and 42;
MERCURE - International trademark No. 403334 registered on December 14, 1973, duly renewed, covering goods and services in classes 8, 16, 21, 39, 41 and 42;
NOVOTEL – International trademark No. 542032 registered on July 26, 1989, duly renewed, covering services in class 42; and
PULLMAN – International trademark No. 1197984 registered on November 28, 2013, covering services in class 43.
The Respondent has registered no less than 25 domain names that incorporate the Complainant's well-known marks and which mimic certain locations of the Complainant's hotels.
Specifically, on May 21, 2017, the Respondent registered the following disputed domain names, listed next to the hotel location each mimics:
<ibislondonearlscourt.com> (Ibis London Earls Court)
<mercuremanchesterpiccadilly.com> (Mercure Manchester Piccadilly)
<novotellondonwest.com> (Novotel London West)
<pullmanstpancras.com> (Pullman St. Pancras)
And on June 1, 2017, the Respondent registered the following disputed domain names, listed next to the hotel location each mimics:
<ibisbirminghamcentre.com> (Ibis Birmingham Centre)
<ibismanchesterportlandstreet.com> (Ibis Manchester Centre Portland Street)
<ibislondonexcel.com> (Ibis London Excel)
<ibisglasgowcitycentre.com> (Ibis Glasgow City Centre)
<ibisedinburghpark.com> (Ibis Edinburgh Park)
<ibisbristolcentre.com> (Ibis Bristol Centre)
<ibisbirminghamnewstreetstation.com> (Ibis Birmingham New Street Station)
<ibismanchestersalfordquays.com> (Ibis Manchester Salford Quays)
<ibislondoneustonstation.com> (Ibis London Euston Station)
<ibisglasgow.com> (Ibis Glasgow)
<ibislondonwembley.com> (Ibis London Wembley)
<ibislondonheathrowairport.com> (Ibis London Heathrow Airport)
<ibislondonexceldocklands.com> (Ibis London Excel Docklands)
<ibislondonblackfriars.com> (Ibis London Blackfriars)
<ibismanchestercentrepollardstreet.com> (Ibis Manchester Centre Pollard Street)
<ibislondoncity.com> (Ibis London City)
<ibisleedscentre.com> (Ibis Leeds Centre)
<ibisportsmouthcentre.com> (Ibis Portsmouth Centre)
<ibismanchestercentreportlandstreet.com> (Ibis Manchester Centre Portland Street) <ibislondonhounslow.com> (Ibis London Hounslow Street)
<ibisedinburghcentresouthbridge.com> (Ibis Edinburgh Centre South Bridge)
After the Respondent registered the disputed domain names, it set them to automatically redirect to the Complainant's authorized website found at <accorhotels.com>.
The Complainant attempted to resolve this dispute amicably, by sending a letter and email to the Respondent dated July 4, 2017, requesting that the Respondent cease and desist using the disputed domain names and that the Respondent transfer them to the Complainant. The Respondent did not respond to the Complainant's correspondence. But after receiving the letter and email, the Respondent set the disputed domain names to redirect to web pages displaying pay-per-click links reproducing the Complainant's trademarks and other commercial links. Because the Complainant's efforts at amicable resolution did not bear fruit, it filed this action under the Policy.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant's trademarks IBIS, MERCURE, NOVOTEL and PULLMAN.
A majority of the disputed domain names reproduce the Complainant's trademark IBIS in its entirety, which previous panels have considered to be very well-known in the field of hotels. See Accor v. Ata Kivilcim, WIPO Case No. D2006-1366; Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243; Accor, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Accor v. Leland M. Rutla, WIPO Case No. D2015-0912 and Accor v. Central American SEO Ltd., WIPO Case No. DCO2011-0011.
Furthermore, several of the disputed domain names reproduce the Complainant's trademarks MERCURE, NOVOTEL and PULLMAN in their entireties. Previous panels have also considered these marks to be very well-known in the field of hotels. See Accor v. null, WIPO Case No. D2016-1160; Accor v. Internet Service, Nguyen Ben, WIPO Case No. D2015-2054; ACCOR v. Domain ID Shield Service Co., Limited / Mr. Sakol Yoowiwat, WIPO Case No. D2012-0018.
Many UDRP panels have held that the incorporation of a trademark in its entirety may be sufficient to establish that a disputed domain name is identical or confusingly similar to the complainant's registered trademark. See Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin., WIPO Case No. D2010-1059.
The disputed domain names in this case reproduce entirely the Complainant's trademarks IBIS, MERCURE, NOVOTEL and PULLMAN with the addition of geographical terms (names of cities) and names of certain areas or streets within those cities. These domain names also reproduce the name of each hotel. Indeed, the addition of the geographic terms "London", "Manchester", "Birmingham", "Glasgow", "Edinburgh", "Bristol", "Leeds" and "Portsmouth" and names of certain areas or streets within those cities in the disputed domain names are insufficient to avoid any likelihood of confusion.
Many other panels have consistently determined that a domain name that consists of a trademark combined with a geographical term is still confusing and does not provide additional specification or sufficient distinction from the Complainant or its trademarks. See L'Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd., WIPO Case No. D2008-1640; L'Oréal v. Liao Quanyong, WIPO Case No. D2007-1552; Accor v. Serdar Ceylan, WIPO Case No.D2011-2231, and LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505.
The gTLD ".com" is typically not to be taken into consideration when examining the identity or similarity between the Complainant's trademark and the disputed domain names. Accor v. Noldc Inc., WIPO Case No. D2005-0016. The mere adjunction of a gTLD is irrelevant as it has been well-established that the generic Top-Level Domain is insufficient to avoid a finding of confusing similarity. L'Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.
Accordingly, by registering the disputed domain names, the Respondent created a likelihood of confusion with the Complainant's trademarks. It is likely that these domain names could mislead Internet users into thinking that these are the official domain names of each hotel, or in some way, associated with the Complainant, especially when taking the initial webpage redirecting set up by the Respondent into consideration.
The Complainant has used the trademarks IBIS, MERCURE, NOVOTEL and PULLMAN in connection with a wide variety of products and services around the world. Consequently, the public has learned to perceive the goods and services offered under these trademarks as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain names would be owned by the Complainant or at least assume that they are related to the Complainant.
For all of the above-mentioned reasons, the disputed domain names are identical or confusingly similar to the trademarks IBIS, MERCURE, NOVOTEL and PULLMAN in which the Complainant has rights, and therefore the first element of the Policy is met.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by assessing whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of evidence demonstrating rights or legitimate interests in respect of the domain names, shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of production of evidence demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
"(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."
In this case, there are several indicators concerning the Respondent's lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain names, nor is there any evidence in the record showing the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute or in a legitimate non-commercial or fair manner.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location."
The Panel finds that the Respondent registered the disputed domain names in bad faith, particularly due to the use of the Complainant's well-known trademarks in combination with multiple actual locations of the Complainant's hotels. Bad faith use is clear from the Respondent's activities of using the disputed domain names to establish, for commercial gain, websites displaying unauthorized pay-per-click links. The Respondent's prior use of the disputed domain names to redirect to the Complainant's official website does not change the Panel's finding of bad faith.
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:
be transferred to the Complainant.
Evan D. Brown
Date: January 31, 2018