WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Domain Administrator, See PrivacyGuardian.org/ Home of Domains, Domain Admin/ This Domain is For Sale

Case No. D2018-2780

1. The Parties

The Complainant is Accor of Issy-les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Arizona, United States of America (the “United States”) / Home of Domains, Domain Admin/ This Domain is For Sale of Arizona, United States.

2. The Domain Name and Registrar

The disputed domain name <accorlivelimitless.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 December 5, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2018, 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 December 10, 2018 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 12, 2018.

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 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2019.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 8, 2019. 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 leading global hotel operator and has been in this business since it was founded in 1967. The Complainant operates more than 4,500 hotels in 109 countries worldwide.

The Complainant is the owner of the trademark ACCOR, which is registered as International Trademarks No. 1128307 on February 20, 2012 and No. 742032 on August 25, 2000, designating countries such as Australia, Japan, the United States, China, and Germany, among others.

The disputed domain name was registered on July 20, 2018.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark. The trademark ACCOR is included in its entirety in the disputed domain name and the terms “live” and “limitless” are insufficient to prevent a likelihood of confusion with the ACCOR trademark. The Complainant’s trademark has also been considered to be well-known or famous by several previous Panels. The Complainant has also filed an application in France for the trademark ACCOR LIVE LIMITLESS on June 26, 2018, i.e., before the disputed domain name was registered.

The Respondent is neither affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register the disputed domain name. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name or the names “ACCOR” and/or “ACCOR LIVE LIMITLESS”, in accordance with paragraph 4(c)(ii) of the Policy.

It is implausible that the Respondent would not have been aware of the Complainant when registering the disputed domain name. The Complainant’s trademark has been considered as well-known by previous Panels. The Complainant’s trademark rights predate the registration date of the disputed domain name, which previous Panels have held to prove bad faith registration.

As the disputed domain name is confusingly similar to the Complainant’s trademarks, previous Panels have held that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765 and Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

The Respondent is offering the disputed domain name for sale at USD 990. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the Respondent in registering the disputed domain name can be compelling evidence of bad faith registration and use. Furthermore, the Respondent has been subjected to 10 Panel decisions where the Panels have ordered the transfer of the disputed domain names to their respective owners.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The disputed domain name includes the Complainant’s trademark in its entirety combined with the general terms “live” and “limitless”. The addition of a descriptive term does not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements (section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”).

The Panel finds that the addition of such terms to the Complainant’s trademark does not avoid the possibility that the disputed domain name is confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP Panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interest in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name or the names “ACCOR” and/or “ACCOR LIVE LIMITLESS”, in accordance with paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”.

The Panel agrees with the previous Panel decisions referred to by the Complainant in finding that the Complainant’s trademark is well-known. Also considering that the disputed domain name was registered shortly after the Complainant filed its French trademark application for ACCOR LIVE LIMITLESS, it is inconceivable that the Respondent would not have been aware of the Complainant and it’s trademark rights when registering the disputed domain name.

The Complainant has established that the disputed domain name has been offered for sale at USD 990. This sum clearly exceeds the normal out-of-pocket costs of registering a domain name. The Panel therefore considers that the disputed domain name has been registered primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to a domain name. This is in violation of paragraph 4(b)(i) of the Policy.

The Complainant has also established that the Respondent has been subjected to 10 Panel decisions where Panels have decided against the Respondent. The Panel further considered that the disputed domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct, which is in violation of paragraph 4(b)(ii) of the Policy.

Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.

7. Decision

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, <accorlivelimitless.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: January 22, 2019