WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. WhoisGuard, Inc. / Bill Bro
Case No. D2018-2329
1. The Parties
Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
Respondent is WhoisGuard, Inc. of Panama / Bill Bro of Santa Monica, California, United States of America (“Unites States”).
2. The Domain Name and Registrar
The disputed domain names <accorhotels5g.com> and <accor5g.online> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 26, 2018.
On October 26, 2018, Complainant transmitted an email communication Respondent sent to it to the Center. In an email of October 26, 2018, Respondent stated that he was no longer the owner of the Domain Names.
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 Respondent of the Complaint, and the proceedings commenced on October 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2018. On the same day, Respondent sent an email communication to the Center, indicating “I protest on the basis of your failure to respond to my prior response”. On November 20, 2018, the Center requested Respondent to submit the said response by November 22, 2018. The Response did not reply by the specified due date. The Center notified the Parties of Commencement of Panel Appointment Process on November 26, 2018.
The Center appointed Gregor Vos as the sole panelist in this matter on December 5, 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
Complainant operates hotel chains, consisting of over 4,500 hotels worldwide.
Complainant is the owner of the following trademark registrations (hereafter: the “Trademarks”):
- European Union Trademark registration No. 010248466 for ACCORHOTELS, registered on March 20, 2012;
- International Trademark registration No. 742032 for ACCOR, registered on August 25, 2000;
- International Trademark registration No. 1103847 for ACCORHOTELS, registered on December 12, 2011.
Further, Complainant operates the following domain names, which wholly incorporate the Trademarks:
The Domain Names were registered by Respondent on April 26, 2018 and September 6, 2018, respectively. Both sites resolved to parking pages containing sponsored links either targeting the Trademarks or
hotel-related services. Currently, the domain name <accorhotels5g.com> is no longer resolving to parking pages containing sponsored links related to hotels.
5. Parties’ Contentions
Complainant first notes that the Trademarks have been considered to be well-known and famous by various previous UDRP Panels. In addition, Complainant states that the Domain Names are confusingly similar to the Trademarks, as the Domain Names consist merely of the Trademarks, the number “5” and the letter “g”. Adding a letter and number would be insufficient to avoid user confusion. According to Complainant, most individuals navigating to the Domain Names will be expecting to reach a website operated by, or at least associated with, Complainant.
Furthermore, Complainant asserts that Respondent does not hold any rights or legitimate interests in respect of the Domain Names. Complainant claims that Respondent is neither affiliated with Complainant, nor has he ever been authorized by Complainant to use and register the Trademarks, or seek registration of any domain name incorporating the Trademarks. In addition, Complainant submits that Respondent is not commonly known by the Domain Names or the Trademarks and that there is simply no evidence to the contrary. Also, Complainant states that Respondent neither was using nor had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. Complainant adds that in the absence of any license or permission from Complainant to use the widely known Trademarks, no actual or contemplated bona fide or legitimate use of the Domain Names can reasonably be claimed by Respondent. Moreover, Complainant states that Respondent’s use of the Domain Names to resolve to parking pages displaying commercial links targeting Complainant and its services – from which Respondent or a third party is obtaining financial gain – cannot be considered a legitimate noncommercial or fair use of the Domain Names, as Respondent is misleadingly diverting consumers for financial gain.
Finally, Complainant asserts that the Domain Names have been registered and (are being) used in bad faith. Complainant states that the Trademarks are well known worldwide. Moreover, Complainant puts forward that the composition of the Domain Names, reproducing not one but two of the Trademarks, demonstrates that Respondent was aware of Complainant and the Trademarks. As a result, it is implausible that Respondent was unaware of Complainant or the Trademarks when he registered the Domain Names. Additionally, the Trademarks predate the registration date of the Domain Names. Complainant argues that the Domain Names are obviously connected with its well-known Trademarks, and that the registration of the Domain Names in bad faith is therefore established. Furthermore, Complainant asserts that Respondent’s bad faith is also evidenced by the fact that Respondent uses (or has used) the Domain Names to direct Internet Users to a parking page displaying commercial links targeting Complainant and its services. Complainant submits that Respondent would use the public’s awareness of the Trademarks to improperly increase traffic to the Domain Names for its own or a third party’s commercial gain. In this regard, Complainant also states that the fact that one of the Domain Names is no longer resolving to a parking page containing sponsored links does not prevent a finding of bad faith given the prior use of (both of) the Domain Names for this purpose. Ultimately, Complainant puts forward that given its goodwill, worldwide renown and the nature of the Domain Names, reproducing Complainant’s Trademarks, no possible use in good faith is conceivable and therefore the Domain Names are used in bad faith.
Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of Complainant’s undisputed factual representations.
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedies requested by Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proven. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that Complainant is registered as the owner of the Trademarks, as can be seen from the submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that Complainant has proven that it has right in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Names with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domain (“gTLD”) suffixes (in the present case“.com” and “.online”) are generally ignored in the comparison between the Domain Names and the Trademarks (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
The Domain Names both incorporate one of the separate Trademarks entirely. Additionally, the Domain Names contain the suffix “5g”. However, a minor variation, such as adding a short letter or number group to a trademark, usually does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0. Here, the Panel finds that the addition of the suffix of “5g” to the Trademarks in the Domain Names is not sufficient to avoid a finding of confusing similarity (see National Westminster Bank plc v. Steve Mart, WIPO Case No. D2012-1711; Tommy Bahama Group, Inc. v. Berno Group International, WIPO Case No. D2012-0531; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012-0075; Space Needle LLC v. Erik Olson, WIPO Case No. D2011-0931; Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286). Therefore, the Panel finds that the Domain Names are confusingly similar to the Trademarks.
Consequently, the Panel finds that the requirements under paragraph 4(a)(i) of the Policy have been fulfilled.
B. Rights or Legitimate Interests
In order to meet the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see, Car 5 v. E. Shiripour, WIPO Case No. DNL 2008-0027).
In the present matter, Complainant argues that Respondent is not affiliated with Complainant, nor has it ever been authorized by Complainant to use or register the Trademarks, or seek registration of any domain name incorporating the Trademarks. Complainant also submits that Respondent is not commonly known by the Domain Names or the Trademarks. In addition, Complainant argues that Respondent has not been using the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute. Further, Complainant asserts that Respondent has not made a legitimate noncommercial or fair use of the Domain Names because Respondent uses the Domain Names for parking pages displaying commercial links targeting Complainant and its services.
Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case.
As Respondent has not replied to Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the UDRP, a complainant must show that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that – as noted by previous UDRP panels – Complainant has sufficiently proven that the Trademarks are well known for hotel services. The Panel finds that given Complainant’s longstanding, widespread and extensive use of the Trademarks, it would not be feasible to consider that Respondent – at the time of the registration of the Domain Names – was unaware of the Trademarks. Also, the fact that Respondent has registered and used two Domain Names which incorporate the Trademarks shows that it was aware of the Trademarks at the time of the registration.
In addition, Complainant has shown that Respondent has used the Domain Names to direct Internet users to a parking page displaying pay-per-click links to other websites, which appear to be associated with Complainant. It is likely that some Internet users will, when searching for Complainant, find the Domain Names and inevitably click on one or more of the links earning Respondent “click through” advertising revenue as a result (Dymocks Holdings Pty Ltd v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0560). It is well established that using the Domain Names to generate revenue through pay-per-click links, where the traffic is attracted due to the use of the Trademarks, amounts to use in bad faith (Dymocks Holdings Pty Ltd v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0560; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396).
These circumstances are enough in the Panel’s view to characterize bad faith registration and use in the present case.
Consequently, the Panel finds that the requirement under paragraph 4(b)(iv) of the Policy has also been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <accorhotels5g.com> and <accor5g.online> be transferred to Complainant.
Date: December 19, 2018