WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Robert Sloan
Case No. D2019-0408
1. The Parties
Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
Respondent is Robert Sloan of New York, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <shortaccor.com>, <shortaccorhotels.com>, and <shortingaccor.com> are registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 20, 2019.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on April 25, 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
Complainant, Acccor, is a company incorporated in France, one of the leading global hotel operators. Among the world leaders in economic and mid-scale hotels, and as a major player in upscale and luxury hospitality services, Accor has provided customers with expertise acquired in this core business for more than 45 years. Its main website is available at “www.accorhotels.com”.
Complainant has exclusive rights in ACCOR, and ACCORHOTELS-related marks. Complainant has registrations and owns several trademarks incorporating the trademark ACCOR and is the sole owner of the trademark ACCOR in multiple jurisdictions around the world, including United States where Respondent resides (such as United States registration number 2838984, registered on May 4, 2004). Complainant also owns international trademark ACCORHOTELS (such as registration number 1103847, registered on December 12, 2011), and in essence Complainant owns the trademark ACCOR all around the world. Complainant also owns and operates several domain names which contain the ACCOR mark in entirety, such as <accor.com> (registered on February 23, 1998), and <accorhotels.com> (registered on April 30, 1998).
Respondent registered all of the disputed domain names on August 9, 2018 and they resolve to Registrar’s parking pages, displaying pay-per-click (“PPC”) links relating to, inter alia, hotel reservations.
5. Parties’ Contentions
Complainant contends that the disputed domain names are identical or confusingly similar to the ACCOR and ACCORHOTELS marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names <shortaccorhotels.com>, <shortaccor.com>, and <shortingaccor.com> be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the ACCOR marks acquired through registration. The ACCOR mark has been registered internationally (covering United States) and also well before the date in which the disputed domain names were registered.
The disputed domain names <shortaccorhotels.com>, <shortaccor.com>, and <shortingaccor.com> differ from Complainant’s trademark ACCOR and ACCOR HOTELS ACCOR by only the word “short” or “shorting” added before the trademark ACCOR. This Panel believes that the mere addition of the common word “short” or “shorting”, used many times in the industry to reflect the profile of a hotel in order to inform the public whether a hotel is designed for short or long stays or in the stock shorting sense, does not avoid a finding of confusing similarity between Complainant’s registered trademarks and the disputed domain names.
It is undisputed that the disputed domain names are confusingly similar to the ACCOR trademark as they encompass the entirety of the trademark. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (explaining that, “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark”).
Accordingly, the Panel concludes that Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
This Panel has to consider as true the facts asserted by Complainant, as Respondent offered no evidence to contradict any of them, amongst the most relevant facts are that Complainant, Accor, is among the leading global hotel operators, and has provided customers with expertise acquired in this core business for more than 45 years. Since it was founded in 1967, Accor has acquired considerable reputation and goodwill worldwide. Accor operates more than 4,500 hotels in 100 countries worldwide and around 660,500 rooms, from economy to upscale. The group includes notable hotel chains such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure, and Ibis. Accor’s brands offer hotel stays tailored to the specific needs of each business and leisure customer and are recognized and appreciated around the world for their service quality. This Panel also considers as a proved fact that Complainant Today, Accor’s hotels are present all around the world, including North and Central America, where it counts up to 89 hotels with 30,364 rooms. In United States, Accor operates 32 hotels with 13,147 room. This Panel also finds that Complainant has rights in the ACCOR international trademarks, covering United States since at least 1988, (which long precede Respondent’s registration of the disputed domain names (in 2018)).
Moreover, Respondent is not an authorized franchisee, licensee or partner of ACCOR-branded services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifts the burden to Respondent to produce relevant evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has produced no evidence to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “accor” in its business operation. Respondent has not provided any evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ACCOR marks or to apply for or use any domain name incorporating the ACCOR marks. There is nothing to suggest that Respondent is commonly known by the disputed domain names. Respondent has not proved that Respondent has any registered trademark rights with respect to the disputed domain names. Furthermore, there is no evidence which shows that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent’s lack of rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant’s trademark ACCOR is well known and has acquired worldwide recognition and reputation with regards to its services. Complainant has registered the trademark ACCOR and other trademarks incorporating ACCOR all over the world, including in the United States. Due to the fact that the trademark is highly distinctive as it has no meaning in any language known to this Panel, it is extremely unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names (in 2018). The Panel therefore finds that the ACCOR mark is not a word that someone will spontaneously and legitimately adopt, but rather a name that someone would adopt with the purpose of creating an impression of an association with Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Respondent chose not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain names were registered in bad faith.
At the time of the Complaint the disputed domain names resolve to pages which contain PPC links relating to Complainant’s industry. At the time this decision is rendered, the disputed domain names continue to resolve to pages containing PPC links. Respondent will generally be deemed responsible for the content appearing at the relevant domain name, including where a registrar has placed a parking page with automatically generated content, unless respondent can show some good faith attempt at preventing advertising which relates to third party trademarks. See WIPO Overview 3.0, section 3.5. Respondent has shown no such good faith attempt in this case and many of the PPC links are to services containing the words “hotels” and “hotels reservations”. There is consistent jurisprudence summarized in section 3.8 of the WIPO Overview 3.0 which provides: “Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an ‘automatically’ generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement.” As discussed above, Complainant’s ACCOR marks, arguably, are well known.
Given the lack of response, the Panel cannot find any other explanation than bad faith in the use of the disputed domain names. Taking into account all the circumstances of this case, the Panel concludes that the registration of the disputed domain names by Respondent is in bad faith.
It can be inferred that by Respondent choosing to register and use the disputed domain names, which are confusingly similar to Complainant’s well-known trademark, intended to take advantage of the association with Complainant’s trademark. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 <shortaccor.com>, <shortaccorhotels.com>, and <shortingaccor.com> be transferred to the Complainant.
Date: May 8, 2019