WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. WhoisGuard, Inc. / Andrii Shuiskyi
Case No. D2019-0966
1. The Parties
The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., Panama / Andrii Shuiskyi, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <accorhotel-group.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 30, 2019, 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 May 3, 2019.
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 May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Peter Burgstaller as the sole panelist in this matter on June 3, 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 disputed domain name was registered by the Respondent on December 19, 2018 (Annex 1).
The Complainant is the owner of the:
- EU Trademark ACCORHOTELS, registered March 20, 2012, for the service classes 35, 39, 43, as well as the:
- International Trademark ACCORHOTELS, registered December 12, 2011, for the service classes 35, 39, 43 designated for AU, CN, RU, SG, UA, US; and
- International Trademark ACCOR, registered August 25, 2000, for the service classes 38, designated under the Madrid Protocol for DK, EE, FI, GB, JP, NO, SE, TR and under the Madrid Protocol by virtue of Article 9sexies for AT, BA, BG, BX, CH, CN, CU, CZ, DE, DZ, EG, ES, HR, HU, IT, KE, MA, MC, PL, RO, RU, SK, UA, VN (Annex 5).
The trademarks ACCORHOTELS and the mark ACCOR are well-known throughout the world with regard to operate global hotels and provide upscale and luxury hospitality services.
The Complainant has not given permission to use its marks in any manner, including in domain names.
The disputed domain name previously resolved to the default page of the registrar and then towards an inactive page (Annex 1).
5. Parties’ Contentions
The Complainant is a leading global hotel operator, a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant has provided customers with expertise acquired in this core business for more than 45 years. Its main web site is available at “www.accorhotels.com.”
Since it was founded in 1967, the Complainant has acquired considerable reputation and goodwill worldwide. The Complainant 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. The Complainant’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.
Today, the Complainant’s hotels are present all around the world, including Europe, where it counts 2,894 hotels and has around 327,508 rooms in owned, lease and managed hotels. The Complainant is also present in the region of the United States of America where it counts up to 56 hotels with 20,175 rooms.
The Complainant became aware of the Respondent’s registration of the disputed domain name <accorhotel-group.com>, which reproduces its trademark ACCOR with the adjunction of the descriptive terms “hotel” and “group” intersected by a hyphen. The disputed domain name also imitates the Complainant’s trademark ACCORHOTELS.
The disputed domain name resolves towards an inactive page; however, email servers have been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.
On December 24, 2018, the Complainant sent a notification to the registrar requesting the deactivation of the disputed domain name in dispute. The registrar has informed the Complainant that it has forwarded the notification to the Respondent and in absence of response from the registrant the registrar has advised the Complainant to initiate a UDRP case for the disputed domain name.
The Complainant is the owner of several trademarks and domain names containing the terms “ACCOR” and “ACCORHOTELS”; the disputed domain name <accorhotel-group.com> is confusingly similar to these trademarks of the Complainant.
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register its trademarks ACCOR and ACCORHOTELS or to seek registration of any domain name incorporating the aforesaid trademarks.
When registering the disputed domain name, it is impossible that the Respondent was unaware of the Complainant and its famous trademarks – the disputed domain name was registered in bad faith. The Respondent also uses the disputed domain name in bad faith – passive holding is within the concept of bad faith usage.
The Respondent did not reply to the Complainant’s contentions.
6. 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 trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark ACCORHOTELS since where the relevant trademark is recognizable within the disputed domain name the mere addition of other descriptive terms like “group” in the present case will not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
In the Panel’s view the domain name <accorhotel-group.com> is also confusingly similar with the trademark ACCOR since it reproduces the trademark only with the addition of the descriptive terms “hotel” and “group”, which does not prevent confusing similarity (see WIPO Overview 3.0, section 1.8).
It has also long been held that suffixes such as a country code or generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks ACCORHOTEL or ACCOR in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, are cumulative; consequently, the Complainant must show that:
- the disputed domain name is registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
It is the Panel’s conviction that the fame of the ACCOR and ACCORHOTELS trademarks makes it inconceivable that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith. Bad faith can be found where a respondent “knew or should have known” of complainant’s trademark rights and, nevertheless registered a domain name in which it had no right or legitimate interest. The fact that the Complainant’s trademark rights predate the registration date of the disputed domain name is moreover a strong indication of bad faith; this is especially true since it is well established by many UDRP panel decisions that the Complainant’s ACCOR and ACCORHOTELS trademarks are well known (see Accor v. DreamHost, Long Giang, WIPO Case No. D2014-0196; Accor v. Huajicani Hujiancai, WIPO Case No. D2014-0189; Accor v. Reap Usd, WIPO Case No. D2016-0177).
Moreover, paragraph 4(b) of the Policy provides: “For the purposes of Paragraph 4(a)(iii), 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 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 […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent’s use of words such as “hotel” and “group” in connection with the famous mark ACCOR and ACCORHOTELS creates likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
Although the domain name at issue currently resolves to inactive site and is not being actively used, previous panels have found that bad faith “use” under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent - inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).
This Panel also concludes that the present passive holding of the disputed domain name constitutes bad faith use, putting emphasis on the following:
- the Complainant’s trademarks are famous worldwide with strong reputation and are well known globally;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name incorporates the Complainants trademarks ACCOR and ACCORHOTELS, and is thus suited to divert or mislead potential Internet users from the web site they are actually trying to visit (the Complainant’s site);
- no good faith use is possible for the Respondent with regard to the disputed domain name.
Taking all these facts and evidence into consideration the Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) 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 name <accorhotel-group.com> be transferred to the Complainant.
Date: June 14, 2019