WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-2816

1. The Parties

The Complainant is Accor, France, represented by Dreyfus & associés, France.

The Respondent is Domains By Proxy, LLC, Registration Private, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <ibisaccorhotel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2019, 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 November 19, 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 November 21, 2019.

The Center verified that the Complaint together with the amended 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 November 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.

The Center appointed Taras Kyslyy as the sole panelist in this matter on December 18, 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 well-known hotel chain operating worldwide with more than 4,500 hotels across the globe, including Ibis hotel chain.

The Complainant has registered the trademarks IBIS, ACCOR and ACCORHOTELS globally. These inter alia include:

- IBIS international trademark No. 541432 registered on July 17, 1989;
- ACCOR international trademark No. 742032 registered on August 25, 2000;
- ACCORHOTELS international trademark No. 1103847 registered on December 12, 2011.

The Complainant has registered a number of domain names which incorporate the above trademarks, including the subdomain <ibis.accorhotels.com>.

The Respondent registered the disputed domain name on May 6, 2019. The disputed domain name was pointing towards a parking page containing sponsored links targeting the Complainant’s activities. Presently, the disputed domain name redirects Internet users to Complainant’s official website without Complainant’s authorization.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name reproduces entirety of the Complainant’s well-known trademarks IBIS and ACCOR. The adjunction of the term “hotel” is insufficient to avoid confusing similarity between the disputed domain name and the Complainant’s trademarks. The disputed domain name imitates the Complainant’s trademark ACCORHOTELS but for the deletion of the letter “s” in the element “Hotels”. However, this slight change does not modify the overall impression of the disputed domain name which is confusingly similar to the Complainant’s trademark ACCORHOTELS. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name as it is viewed as a standard registration requirement.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said marks. The Respondent is not commonly known by the disputed domain name. The Respondent cannot assert that, before any notice of this dispute, he was using, or had made 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. This is confirmed by the fact that the disputed domain name initially resolved to a parking page containing sponsored links targeting the Complainant’s activities, from which the Respondent or a third party was obtaining financial gain, and this cannot be bona fide use as the Respondent is taking unfair advantage of the Complainant’s rights. The Respondent cannot assert either that he has made or that he is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers, or to tarnish the trademarks at issue. As described above, the Respondent’s use of the disputed domain name reproducing the Complainant’s trademarks to direct Internet users to a parking page with pay-per-clicks - which are likely to generate revenues - cannot constitute a legitimate noncommercial or fair use of the disputed domain name as the Respondent is misleadingly diverting consumers for financial gain. The Respondent appears to be a cyber-squatter as he has been involved in many past UDRP procedures (more than 30) in which the panels ordered the transfer of the domain names, which also include another previous dispute initiated by the Complainant against the Respondent.

The disputed domain name was registered and is being used in bad faith. It is implausible that Respondent was unaware of the Complainant and its trademarks when he registered the disputed domain name. The Respondent registered the disputed domain name which is almost identical to the subdomain <ibis.accorhotels.com> used by the Complainant to promote its hotels. The disputed domain name is so obviously connected with the Complainant’s well-known trademarks that its very use by the Complainant with no connection to the trademark suggests opportunistic bad faith. The Respondent is using the disputed domain name to intentionally attract Internet users to his website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, in the present case the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel notes that in the present case the disputed domain name incorporates the Complainant’s trademarks IBIS and ACCOR, which confirms the confusing similarity.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel notes that the addition of the dictionary term “hotel” in the disputed domain name does not prevent a finding of confusing similarity under the first element.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has rights in its registered trademarks.

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case.

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s registered and widely known trademarks, which suggests bad faith registration (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademarks IBIS and ACCOR are well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademarks. Thus, the Panel finds that the disputed domain name, confusingly similar to the Complainant’s trademark, was registered in bad faith.

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 of a competitor; or

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

In this regard, the Panel finds that the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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 <ibisaccorhotel.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: December 26, 2019