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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and D-Edge v. WhoisGuard Inc., WhoisGuard Protected / Json Werl

Case No. D2021-0489

1. The Parties

The Complainants are Accor and D-Edge, France, represented by Dreyfus & associés, France.

The Respondent is WhoisGuard Inc., WhoisGuard Protected, Panama, / Json Werl, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <logind-edge.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 February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 Complainants on February 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 19, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on March 29, 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 Complainants are two entities belonging to the same group of companies. The Complainant D-Edge is the registered owner of several trademarks worldwide containing the term D-EDGE, protected particularly in relation to hotels, software and booking services, e.g. International Registration No. 1458217 D-EDGE HOSPITALITY SOLUTIONS (figurative) registered on December 13, 2018, for goods and services in classes 9, 35, 39, 42 and 43 and designating among others European Union and United Kingdom; International Registration No. 1461722 D-EDGE HOSPITALITY SOLUTIONS (word), registered on December 13, 2018, for goods and services in classes 9, 35, 39, 42 and 43 and designating among others European Union and United Kingdom.

It results from the information disclosed by the Registrar that the disputed domain name was registered on February 4, 2021.

Furthermore, the undisputed evidence provided by the Complainants proves that the disputed domain name <logind-edge.com> is almost identical to the official sub domain name <login.d-edge.com> used by the Complainants and resolved to a web page reproducing almost identically one of the Complainant’s official website and visuals requesting the details in order to log in.

In addition, the undisputed evidence provided by the Complainants proves that the Responded engaged in a phishing scheme, sending fraudulent emails to the Complainants’ customers pretending to be the Complainants with a link redirecting to the disputed domain name, seemingly in order to retrieve classified information, as well as to deceive the recipients of those emails.

On February 5, 2021, the Complainant sent a cease-and-desist letter to the Registrar via email on the basis of its trademark rights requesting blocking the disputed domain name. The disputed domain name currently resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

It results from the Complainants’ undisputed allegations that they belong to the same group (i.e. Accor), a French multinational hotel group, which is the world leader in economic and midscale hotels, and a major player in upscale and luxury hospitality services. Accor has been operating for more than 45 years more than 4,000 hotels in 100 countries worldwide with over 570,000 rooms, from economy to upscale. One of Accor’s well-known brands is D-EDGE hospitality solutions that offers leading-edge e-commerce solutions to more than 11,000 hotels in over 100 countries. D-EDGE offers a hospitality services to numerous hotels all over the world. It combines the technical excellence with the digital marketing expertise. The integrated range of solutions covers all stages of hotel distribution. D-EDGE represents ever-expanding ecosystem with its global network of 500 partners.

In addition, the Complainants operate the domain name <d-edge.com> registered on June 9, 2013, in order to promote its services. The Complainants also use the official sub domain name <login.d-edge.com>.

The Complainants contend that the disputed domain name is confusingly similar to their trademarks, since the incorporation of the main distinctive part of a trademark is sufficient to establish that a domain name is confusingly similar to a complainant’s registered mark. In addition, the disputed domain name is a typo squatting case of the Complainant’s official sub domain name <login.d-edge.com> and reproduces almost identically the official website. The reproduction of the Complainants’ trademarks in the disputed domain name, associated to a clear case of a typo squatting and the reproduction of the Complainant’s official website necessarily creates a high risk of confusion in public’s mind into believing the disputed domain name is an official one, while it is not the case.

The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent is neither affiliated with the Complainant in any way nor has it received any authorization to register and use the disputed domain name nor to use the D-EDGE sign in which the Complainants have rights. The disputed domain name was directing to a website that reproduced the Complainant’s visuals and logo, but it currently resolves to an inactive page. Internet users are likely to wrongly believe that this is the official site and that the Respondent is linked to the Complainant or affiliated to. Such circumstances do not represent a use in connection with a bona fide offering of goods and services. Obviously, the Respondent is making a non-legitimate use of the disputed domain name, with intent for commercial gain to misleadingly create a false impression of confusion and target the Complainant’s consumers. Such behavior cannot be regarded as a legitimate or fair use of the disputed domain names. Similarly, the disputed domain name <logind-edge.com> is virtually identical to the Complainant’s domain name <login.d-edge.com> easing eventual typing error by Internet users; thus, resulting to diversion from the Complainant’s site to that of the Respondent.

Finally, the Complainants contend that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the composition of the disputed domain name entirely reproduces the Complainant’s trademark, it cannot be inferred that the Respondent was unaware of the Complainant’s when he registered the disputed domain name. The Complainants further contend that the Respondent is engaged in a phishing scheme by sending fraudulent emails to the Complainants’ customers impersonating the Complainant with a link redirecting to the disputed domain name, in order to retrieve classified information, as well as to deceive the recipients of those emails. Before the Complainants’ intervention, the disputed domain name redirected to a website that was reproducing the Complainants’ visuals. The Complainant’s submit that the Respondent is taking undue advantage of the Complainants’ trademark and might have generated profits. It is more likely than not, that the Respondent’s primary motive in registering and using the disputed domain name were to capitalize on or otherwise take advantage of the Complainants’ trademark rights, through the creation of initial interest of confusion.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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 has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the complainant must establish rights in a trademark or service mark, and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

It results from the evidence provided, that the Complainant D-Edge is the registered owner of various trademarks including the term D-EDGE, protected particularly in relation to hotels, software and booking services. Reference is made in particular to International Registration No. 1458217 D-EDGE HOSPITALITY SOLUTIONS (figurative) registered on December 13, 2018, for goods and services in classes 9, 35, 39, 42 and 43 and designating among others European Union and United Kingdom; International Registration No. 1461722 D-EDGE HOSPITALITY SOLUTIONS (word), registered on December 13, 2018, for goods and services in classes 9, 35, 39, 42 and 43 and designating among others European Union and United Kingdom.

The disputed domain name incorporates the dominant feature of the Complainant’s trademarks, i.e. D-EDGE, which is clearly recognizable in the disputed domain name. In addition, the term D-EDGE is preceded by the term “login”, which is related to the Complainant’s business activity. The addition of the term “login” to the disputed domain name, and the omission of the terms “hospitality solutions” in the disputed domain name (that are part of the Complainant’s trademark, while not a dominant element) do not prevent a finding of confusing similarity. Furthermore, the disputed domain name is a typo squatting case of the Complainant’s official sub domain name (by omitting the dot between the terms “login” and “d-edge”) and resolved to a web page reproducing almost identically the Complainant’s official website requesting the details in order to log in.

On this regard, previous UDRP panels“have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”(see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.7).

This Panel shares this view and notes that all above-mentioned circumstances of the case supports a finding of confusing similarity.

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name is typically disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainants have no relationship in any way with the Respondent and did not authorize the Respondent’s use of their trademarks containing the term D-EDGE or the registration of the disputed domain name.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0 at section 2.13.1 with further references). It results from the undisputed evidence before the Panel that the disputed domain resolved to a web page reproducing almost identically to the Complainant’s official website requesting the details of Internet users in order to log in. In the case at hand, the Complainant submitted substantial evidence of such illegal activities by providing email correspondence sent to the Complainants’ customers pretending to be the Complainants with a link redirecting to the disputed domain name, seemingly in order to retrieve classified information, as well as to deceive the recipients of those emails. The Panel considers this evidence as sufficient to support the Complainants’ credible claim of illegal activity by the Respondent.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainants have therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainants must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

One of those circumstances is the one specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt 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 notes the nature of the disputed domain name, and finds that it creates a high risk of confusion for Internet users into believing that the disputed domain name will direct them to the Complainant’s official website.

This Panel subscribes the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution (in some such cases, the respondent may host a copycat version of the complainant’s website). Many such cases involve the respondent’s use of a domain name to send deceptive emails, e.g. to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained above, it results from the undisputed evidence submitted by the Complainants that the disputed domain name resolved to a web page reproducing almost identically the Complainant’s official website requesting the details in order to log in. In addition, the Complainants submitted substantial evidence that the Responded engaged in a phishing scheme, sending fraudulent emails to the Complainants’ customers pretending to be the Complainants with a link redirecting to the disputed domain name, seemingly in order to retrieve classified information, as well as to deceive the recipients of those emails. The Panel considers this evidence as sufficient to support the Complainants’ credible claim of illegal activity by the Respondent.

In addition, the use of the disputed domain name in such an illegal scheme additionally demonstrates that the Respondent not only knew of the Complainants, their business and marks, but also attempted to pass itself off as the Complainants (see Septodont ou Septodont SAS ou Specialites Septodont v. Dugan Morgan, WIPO Case No. D2020-1817; Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2018-0645; and Jcdecaux SA v. Whois Privacy Protection Foundation / Anderson Paul, WIPO Case No. D2019-1143).

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent registered the disputed domain name through a privacy shield service to hide his identity and contact details, (2) the Respondent did not provide any response with conceivable explanation of its behavior, and (3) in view of the nature of the disputed domain name, the implausibility of any good faith use to which the disputed domain name may be put.

Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainants are therefore deemed to also have satisfied the third element, 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 <logind-edge.com> be transferred to the Complainants.

Federica Togo
Sole Panelist
Date: April 12, 2021

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