WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Contact Privacy Inc. Customer 1249234285 and Customer 1249234008 / Herve Renault
Case No. D2021-0349
1. The Parties
The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 1249234285 and Customer 1249234008, Canada / Herve Renault, France.
2. The Domain Names and Registrar
The disputed domain names <group-accord-hotel.com> and <group-accorhotels.com> are registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2021 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 February 12, 2021.
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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on March 19, 2021. 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 the French entity Accor, a major actor in the field of hotel services worldwide. It operates over 5,100 hotels in more than 110 countries under several brands such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure and Ibis. It is particularly present in France and in Europe, where it operates over 3,000 hotels.
The Complainant owns numerous trademark rights over ACCORHOTELS and ACCOR, including the following:
- European Union Trademark ACCORHOTELS No 010248466, filed on September 8, 2011 and registered on March 22, 2012;
- International Trademark ACCOR No. 742032, registered on August 25, 2000, with effect in several countries such as China, Germany or Italy.
It also owns and operates a number of domain names to offer its services, such as <accor.com> registered on February 23, 1998, and <accorhotels.com> registered on April 30, 1998.
The disputed domain names <group-accorhotels.com> and <group-accord-hotel.com> were registered on January 26, 2021, through the services of a privacy shield. In the course of the proceeding, the Registrar disclosed the identity of the Respondent, an individual domiciled in France.
The disputed domain names do not appear to have been used. However, the Complainant has argued and submitted evidence that an email server was configured on the disputed domain names.
5. Parties’ Contentions
In essence, the Complainant argues as follows:
On the first element of the Policy, it states that the disputed domain names <group-accorhotels.com> and <group-accord-hotel.com> reproduce its trademarks ACCOR and ACCORHOTELS, which have regularly been considered well known by previous UDRP panels. The Complainant adds that “[t]he domain name <group-accord-hotel.com> also imitate the trademark ACCORHOTELS with the deletion of the letter ‘s’ and with the adjunction of the letter ‘d’”. Thus, this deleted letter does not significantly affect the appearance or pronunciation of this domain name”.
On the second element of the Policy, the Complainant indicates that the Respondent “is neither affiliated with Complainant in any way nor has he been authorised by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said marks. Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The registration of the ACCOR and ACCORHOTELS trademarks preceded the registration of the disputed domain name for years”. It also stresses that “[t]he domain names in dispute are so confusingly similar to Complainant’s well-known trademarks ACCOR and ACCORHOTELS that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the domain names <group-accorhotels.com> and <group-accord-hotel.com>”. On the contrary, the Complainant believes that, if confronted with the disputed domain names, the public will believe that they are endorsed by the Complainant.
Regarding the registration of the disputed domain name in bad faith, the Complainant claims that “given Complainant’s goodwill and renown, and the nature of the disputed domain names, Respondent could simply not have chosen the disputed domain names for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of Complainant's goodwill and reputation, which clearly constitutes bad faith”. Actually, the Complainant submits, even if the Respondent was not aware of the existence of the Complainant’s trademarks, any search online would have disclosed its activities, rights, and reputation.
Regarding the use of the disputed domain name in bad faith, the Complainant relies on the doctrine of bad faith through passive holding. In this respect, it indicates in particular that “given Complainant’s goodwill and renown worldwide and the nature of the disputed domain names, there simply cannot be any ‘actual or contemplated good faith use’ of the disputed domain names by Respondent or any third party, as any use would result in misleading diversion and unfairly taking advantage of Complainant’s rights”. It considers, also, that the configuration of an email server on the disputed domain names leads to a presumption of bad faith use, because of the risk of engagement in a phishing scheme.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The disputed domain name <group-accorhotels.com> reproduces the trademark ACCOR HOTELS in its entirety. The disputed domain name <group-accord-hotel.com> contains the trademark ACCOR. The addition of the final letter “d” of “Accord” is a simple typo, which is hardly noticeable. In both cases, the trademarks of the Complainant are clearly visible and perceivable in the disputed domain names. Indeed, they are separated from the other elements with hyphens. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Further, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (WIPO Overview 3.0, section 1.8). In this case, the addition of the generic terms “group” or “hotel” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.
Therefore, the Panel finds that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has argued that the Respondent is not commonly known by the disputed domain names, and has not been authorized by the Complainant to register and use the disputed domain names. The Panel also notes that, at least presently, the disputed domain names do not appear to be used. Therefore, a finding of legitimate use by the Respondent cannot be made.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 Respondent, who is domiciled in France, could hardly ignore the existence and reputation of the trademark ACCOR of the Complainant in the field of hotel services. This presumption of knowledge is confirmed by the configuration of the disputed domain names: first, the element “group” was added in first position, suggesting the existence of a group of companies, or group of activities, under the control of Accor or Accor Hotels. Indeed, the Complainant is a group that operates thousands of hotels, with different brands. Second, the Respondent chose to combine the element “Accor” and the word “hotel”, thus expressly referring to the field of activity of the Complainant. Without any doubt, the Respondent targeted the Complainant when registering the domain names, and the Panel cannot foresee any possible legitimate use of the disputed domain names: the connection is too obvious. The disputed domain names <group-accorhotels.com> and <group-accord-hotel.com> will be perceived by Internet users as hosting webpages connected to the Complainant, or they will be used to send emails which will provide the false impression that they originate from employees of the Complainant. In this respect, the Complaint indicates that that email servers were configured on the disputed domain names, with the subsequent risk of phishing activities, further suggesting bad faith in the use of the disputed domain names. See WIPO Overview 3.0, section 3.4.
Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.
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 <group-accord-hotel.com> and <group-accorhotels.com> be transferred to the Complainant.
Date: March 24, 2021