WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Jiang Li
Case No. D2017-0958
1. The Parties
The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Jiang Li of Beijing, China.
2. The Domain Name and Registrar
The disputed domain names <accorhootels.com> and <accorhottels.com> are registered with eNom, Inc. eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2017. On May 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 June 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 10, 2017. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services.
The Complainant’s hotels are present around the world including the Asia Pacific region where it counts up to 763 hotels with more than 150,000 rooms. In China, Accor operates 192 hotels with more than 45,000 rooms and over 18,500 employees in owned, leased and managed hotels.
The Complainant owns the International Trade Mark Registration No. 727696 for the word mark ACCOR, designating, among a number of other countries, China. This trademark has been registered since December 28, 1999 for goods and services of Classes 16, 39 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter the “Nice Classification”).
The Complainant also owns the International Trade Mark Registration No. 1103847 for the word mark ACCORHOTELS, designating among a number of other countries China. This trademark has been registered since December 12, 2011 for services of Classes 35, 39 and 43 of the Nice Classification.
Since April 30, 1998 the Complainant owns the domain name <accorhotels.com> for promotion of its services. The Complainant also owns the domain name <accorhotels.cn>, registered on March 17, 2003.
The disputed domain names were registered on November 26, 2016 and both at the time of filing of the Complaint and rendering of this administrative decision they were used to direct Internet users to a webpage displaying revenue generating pay-per-click links.
5. Parties’ Contentions
The Complainant contends that the disputed domain names <accorhottels.com> and <accorhootels.com> reproduce its ACCOR trademark in its entirety with the association of the misspelled terms “hottels” and “hootels” imitating the trademark ACCORHOTELS.
The disputed domain names resolve to a parking page displaying commercial links which are related to hotel services and notably those of the Complainant and its competitors.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain names in bad faith. Taking into account the worldwide fame of the Complainant’s ACCOR and ACCORHOTELS trademarks, the Respondent was most likely aware of these trademarks at the time of registering the disputed domain names.
The Complainant states that the disputed domain names resolve to a parking page displaying commercial links which are related to hotel services and notably those of the Complainant and its competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademarks ACCOR and ACCORHOTELS, and for the purpose of this proceeding, the Panel establishes that the Complainant’s International Trade Mark Registration No. 727696 for the word mark ACCOR and the International Trade Mark Registration No. 1103847 for the word mark ACCORHOTELS satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the ACCOR and ACCORHOTELS marks, the Panel next assessed whether the disputed domain names <accorhootels.com> and <accorhottels.com> are identical or confusingly similar to the ACCOR and ACCORHOTELS trademarks of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
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.
According to section 1.9 of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element.
According to section 1.11.1 of the WIPO Overview 3.0 the applicable Top Level Domain (“TLD”) 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 confusingly similar test.
The disputed domain names contain the Complainant’s ACCOR trademark in its entirety. The applicable gTLD suffix in the disputed domain names, “.com” should in relation to this administrative proceeding be disregarded.
The only elements in the disputed domain names other than the widely-known ACCOR trademark of the Complainant is the addition of misspelled terms “hottels” and “hootels” which in fact results in domain names virtually identical to the Complainant’s ACCORHOTELS trademark.
In view of this Panel, this is a textbook example of the practice known as “typosquatting”, which e.g.,relies on mistakes such as typos made by Internet users when inputting a website address into a web browser.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain names <accorhootels.com> and <accorhottels.com> are confusingly similar to the ACCOR and ACCORHOTELS trademarks of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademarks ACCOR and ACCORHOTELS.
The Complainant has never authorized the Respondent to use its ACCOR and/or ACCORHOTELS trademarks in any way, and the Complainant’s prior rights in the ACCOR and ACCORHOTELS trademarks long preceded the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0 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 the relevant evidence demonstrating rights of 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.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain names in bad faith.
According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The Complainant’s ACCOR and ACCORHOTELS trademarks are widely known, and the disputed domain names are reproducing the ACCOR trademark it in its entirety and through typosquatting the ACCORHOTELS trademark of the Complainant as well. These facts lead this Panel to conclude that the Respondent must have been aware of the Complainant’s trademarks at the time of obtaining the disputed domain names and chose to register them in order to exploit the reputation behind the ACCOR and ACCORHOTELS trademarks without any authorization or rights to do so.
According to section 3.5 of the WIPO Overview 3.0 particularly with respect to “automatically” generated pay-per-click links, panels have held that neither the fact that such links are generated by a third party such as registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
The fact that the Respondent is using the disputed domain names to direct Internet users to a webpage displaying commercial links related to hotel services of the Complainant (while the Respondent retaining control over the diversion and creating real or implied ongoing threat to the Complainant, as per section 3.1.4 of the WIPO Overview 3.0) and its competitors is in the view of this Panel clear evidence of the Respondent’s intent to abusively profit from the reputation of the Complainant’s ACCOR and ACCORHOTELS trademarks and as such indication of bad faith registration and use.
In addition to facts discussed above, the Respondent’s failure to respond to repeated communications from the Complainant and use of false contact details1 are further circumstances which the Panel considered as factors of bad faith registration and use.
In the view of this Panel, all the above discussed facts and circumstances unquestionably support applicability of paragraphs 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is 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 <accorhootels.com> and <accorhottels.com> be transferred to the Complainant.
Date: July 22, 2017
1 According to the record, the Written Notice sent by the Center to the Respondent was not delivered due to incomplete and/or false contact details.