WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Fundacion Private Whois

Case No. D2012-1654

1. The Parties

Complainants are Accor and SoLuxury HMC each of Paris, France, represented by Dreyfus & associés, France.

Respondent is Fundacion Private Whois of Panama City, Panama.

2. The Domain Names and Registrar

The disputed domain name names are:

<aachen-hotel-sofitel.com>, <accor-holidays.com>, <accor-incentive-network.com>, <accor-week-end.com>, <accor-weekend.com>, <accorweekend.com>, <amsterdam-hotels-sofitel.com>, <antwerpen-hotel-accorhotels.com>, <athen-hotel-sofitel.com>, <caen-hotel-accorhotels.com>, <cairns-hotel-sofitel.com>, <cairo-hotel-sofitel.com>, <ibishotel-1euro.com>, <kairo-hotel-sofitel.com>,
<la-defense-hotel-accorhotels.com>, <novotel-hefei.com> and <tahiti-hotel-sofitel.com>.

Each of the disputed domain names is registered with Internet.bs Corp. (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 17, 2012. On August 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with each of the disputed domain names. On August 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of each of the disputed domain names and providing contact information and other details for each registration.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012.

No Response was received. Accordingly, the Center notified Respondent’s default on September 18, 2012.

The Center appointed Debra J. Stanek as the sole panelist in this matter on September 28, 2012. 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

Complainants are related companies, which are well-known throughout the world for their hotels and related services. Complainant SoLuxury HMC is a wholly-owned subsidiary of Complainant Accor.

Complainant Accor owns an International trademark registration for the mark ACCOR (registered in August 2007) and the mark NOVOTEL (registered in July 1989); each registration covers, among other things, hotel services.

Complainant SoLuxury HMC owns an International trademark registration for the mark IBIS HOTELS (registered in September 2011) and for the mark SOFITEL (registered in August 2007). As with the marks owned by its parent, Accor, each registration covers hotel services.

From December 2011 and January 2012, Respondent registered the disputed domain names that are the subject of this proceeding.

In February, March, and April 2012, Complainants sent cease and desist letters objecting to most of the registrations.¹ Complainants did not, however, receive a response to any of the letters.

As of the writing of this decision, more than half of the domain names appear to be inactive. The eight listed below resolve to pages that display images and text that appears to be in Japanese:

<amsterdam-hotels-sofitel.com>; <antwerpen-hotel-accorhotels.com>; <cairns-hotel-sofitel.com>; <cairo-hotel-sofitel.com>; <ibishotel-1euro.com>; <kairo-hotel-sofitel.com>; <la-defense-hotel-accorhotels.com>; <novotel-hefei.com>.

5. Parties’ Contentions

A. Complainants

Complainants are part of the same group of companies. Complainant SoLuxury HMC is a wholly-owned subsidiary of Complainant Accor.

Complainants operate hotels worldwide, ranging from economy to upscale luxury hotels. They currently operate more than 4,200 hotels in 90 countries. The hotels include those in the Pullman, Novotel, Mercure, Sofitel and Ibis hotel chains.

In addition, Complainants own domain names that include the names of their hotel chains, including <accorhotels.com>, <accor.com>, and <novotel.com>. Both of the Complainants communicate with the public primarily through the Internet and their Internet websites, through which visitors can locate and book hotel rooms.

After learning of the registrations, Complainants sent cease and desist letters, but did not receive any replies.

1. Identical or Confusingly Similar

Complainants own the following International trademark registrations, each of which includes hotel-related services: ACCOR, IBIS HOTELS, SOFITEL, and NOVOTEL.

Each of the disputed domain names is confusingly similar to one of Complainants’ marks. Each of the domain names includes one of Complainants’ marks in its entirety and adds a geographic or generic term such as “hotels”, “weekends”, or “holidays,” which directly link to Complainants’ hotel services.

2. Rights or Legitimate Interests

Respondent is not affiliated with Complainants and Complainants have not authorized or licensed Respondent to use their marks or register any domain names that incorporate their marks.

Further, Respondent registered each of the disputed domain names after Complainants had established their rights in the marks.

Because of the close similarity of the domain names to Complainants’ marks, Respondent cannot reasonably contend that it was intending any legitimate or bona fide use of the domain names.

Respondent is not commonly known by the names “Accor,” “Ibis,” “Sofitel,” or “Novotel”.

Finally, the Panel should assume Respondent has no rights or legitimate interests in the domain names as a result of Respondent’s failure to respond to Complainants’ cease and desist letters.

3. Registered and Being Used in Bad Faith

Complainants point to the following in support of a finding of bad faith:

It is implausible that Respondent was unaware of Complainants and their marks at the time the disputed domain names were registered. Complainants are well-known throughout the world, operating 4,200 hotels in 90 countries.

Other UDRP panels have recognized that the marks at issue: ACCOR, IBIS, NOVOTEL, and SOFITEL are well-known throughout the world.

A quick trademark or Internet search would have easily revealed the existence of Complainants and their marks. Failure to perform a trademark search contributes to a finding of bad faith.

Respondent is using a privacy service to mask the identity of the owner of the registrations.

There is no doubt that visitors seeking Complainants’ websites have ended up, instead, on the web pages used by Respondent.

It is likely that Respondent registered the domain names in order to prevent Complainants from reflecting their marks in the domain names.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

A. Procedural Matters

The Complaint identifies two Complainants: Accor and So Luxury HMC. Neither the Policy nor the Rules provide for multiple Complainants. The Panel, consistent with the consensus view, finds that a complaint filed by multiple complainants may be appropriate where all of the complainants either have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion and it would be equitable and procedurally efficient to permit the consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 4.16. The Panel also subscribes to the remainder of the consensus view:

“In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”

No specific request for consolidation appears to have been made in this case. Instead, Complainants simply point to decision by other UDRP panels involving members of the same group of companies.

In fact, Complainants are separate legal entities; the Complaint does not contend that they have a shared interest in the marks at issue, instead, Complainant Accor appears to own and control the ACCOR and NOVOTEL marks used with the hotel chains that bear those names, while Complainant SoLuxury HMC appears to own and control the IBIS HOTELS and SOFITEL marks.

Nonetheless, the Panel finds that the Complaint does assert that Respondent has engaged in common conduct that has affected their individual rights in a similar fashion. The Panel also finds that it would equitable and procedurally efficient to permit consolidation. Under these circumstances, the Panel permits the consolidation of the Complaint such that each Complainant asserts a claim against Respondent.

Complainant Accor’s claim relates to:

<accor-holidays.com>; <accor-incentive-network.com>; <accor-week-end.com>; <accor-weekend.com>; <accorweekend.com>; <antwerpen-hotel-accorhotels.com>; <caen-hotel-accorhotels.com>; <la-defense-hotel-accorhotels.com>.

Complainant SoLuxury HMC’s claim relates to:

<aachen-hotel-sofitel.com>; <amsterdam-hotels-sofitel.com>; <athen-hotel-sofitel.com>; <cairns-hotel-sofitel.com>; <cairo-hotel-sofitel.com>; <ibishotel-1euro.com>; <kairo-hotel-sofitel.com>; <novotel-hefei.com>; <tahiti-hotel-sofitel.com>.

B. Substantive Matters

In order to prevail, a complainant must prove, as to the disputed domain name, that:

(i) It is identical or confusingly similar to a mark in which the complainant has rights.

(ii) The respondent has no rights or legitimate interests in respect to it.

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

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).

1. Identical or Confusingly Similar

Complainants have established rights in the marks ACCOR, NOVOTEL, IBIS HOTELS, and SOFITEL by virtue of the evidence of their respective trademark registrations.

Each of the disputed domain names consists of one of the above marks combined with one or more other terms. In the main, these are geographic terms, such as the names of cities (e.g., “Caen”, “Tahiti”, “Amsterdam”) or districts (e.g., “La Défense”) and generic terms that have an obvious and direct connection to hotel services, such as “hotel”, “holidays”, and variants of “weekend”.

The only two that do not fit the above description are <accor-incentive-network.com> and <ibishotel-1euro.com>. With respect to these two domain names, the additional terms do not relate as directly to hotel services. At the same time, however, in the Panel’s view, the additional terms do not effectively distinguish the domain names – each of which begin with and feature one of Complainants’ marks – from hotel services.

The Panel finds that each of the domain names is confusingly similar to a mark in which one of the Complainants has rights.

2. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraphs 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Complainants have made a prima facie showing as to the examples set out in paragraph 4(c)(i) and (iii) of the Policy:

There is no reason to believe that Respondent is commonly known by any of the disputed domain names despite the fact that Respondent’s identity has not been disclosed. As discussed above, the domain names consist of Complainants’ well-known trademarks and other geographic and generic terms. In each case, the relevant trademark was in use and had been registered prior to registration as part of the domain name.

For similar reasons, there is no reason, in this Panel’s view, to believe that Respondent could be using, or intending to use, any of the domain names in connection with a bona fide offering of any kind.

Nor does it appear that those domain names that are in use are being used in a noncommercial manner or in a way that would otherwise be a fair use.

The Panel finds, as to each of the disputed domain names, that the Respondent does not have rights or legitimate interests in the domain name.

3. Registered and Being Used in Bad Faith

A complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).

(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).

Respondent registered multiple domain names incorporating Complainant Accor’s ACCOR mark and Complainant SoLuxury’s SOFITEL mark. The Panel concludes that Respondent registered them to prevent each Complainant from reflecting its mark in a domain name. Further, registration of eight domain names, in the case of the ACCOR mark, and seven in the case of the SOFITEL mark, establishes a pattern under paragraph 4(b)(ii), as to the following disputed domain names:

<aachen-hotel-sofitel.com>, <accor-holidays.com>, <accor-incentive-network.com>, <accor-week-end.com>, <accor-weekend.com>, <accorweekend.com>, <amsterdam-hotels-sofitel.com>, <antwerpen-hotel-accorhotels.com>, <athen-hotel-sofitel.com>, <caen-hotel-accorhotels.com>, <cairns-hotel-sofitel.com>, <cairo-hotel-sofitel.com>, <kairo-hotel-sofitel.com>, <la-defense-hotel-accorhotels.com> and <tahiti-hotel-sofitel.com>.

Further, Complainants’ rights in each of the marks at issue predate Respondent’s registration of the disputed domain names. The Panel believes that it is most probable that Respondent was aware of Complainants’ hotels and trademark rights at the time the domain names were registered.

Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainants have established that Respondent registered and is using each of the above domain names, names as well as the two remaining names, <ibishotel-1euro.com> and <novotel-hefei.com>, in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the disputed domain names be cancelled:

<aachen-hotel-sofitel.com>, <accor-holidays.com>, <accor-incentive-network.com>, <accor-week-end.com>, <accor-weekend.com>, <accorweekend.com>, <amsterdam-hotels-sofitel.com>, <antwerpen-hotel-accorhotels.com>, <athen-hotel-sofitel.com>, <caen-hotel-accorhotels.com>, <cairns-hotel-sofitel.com>, <cairo-hotel-sofitel.com>, <ibishotel-1euro.com>, <kairo-hotel-sofitel.com>, <la-defense-hotel-accorhotels.com> <novotel-hefei.com> and <tahiti-hotel-sofitel.com>.

Debra J. Stanek
Sole Panelist
Dated: October 12, 2012

¹ The letters attached as annexes to the Complaint relate to all but a four or five of the domain names.