WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Mohammad Reza Aghaei

Case No. DIR2018-0011

1. The Parties

Complainant is ACCOR of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

Respondent is Mohammad Reza Aghaei of Tehran, Islamic Republic of Iran.

2. The Domain Names and Registrar

The disputed domain names <hotelf1.ir>, <ibistehran.ir>, <novotelhotels.ir> and <novoteltehran.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On May 16, 2018, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on May 23, 2018.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “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 May 24, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2018. On June 14, 2018, the Center notified Respondent’s default.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 20, 2018. 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

Complainant is a company organized under the laws of France that belongs to the world leading hotel chains with brands including HOTEL F1, IBIS as well as NOVOTEL.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designations “Hotel F1”, “Ibis” and “Novotel”, inter alia:

- Word-/device mark HOTEL F1, European Union Intellectual Property Office (EUIPO), Registration No. 005916671, Registration Date: April 14, 2008, Status: Active;

- Word mark IBIS, World Intellectual Property Organization (WIPO), Registration No. 541432, Registration Date: July 17, 1989, Status: Active;

- Word mark IBIS, Iran Intellectual Property Office (IRIPO), Registration No. 123326, Registration Date: May 10, 2005, Status: Active

- Word mark NOVOTEL, EUIPO, Registration No. 010429082, Registration Date: April 20, 2012, Status: Active;

- Word mark NOVOTEL, IRIPO, Registration No. 74563, Registration Date: December 29, 1994, Status: Active

Moreover, Complainant has evidenced to be the owner of various domain names including its HOTEL F1, IBIS and NOVOTEL trademarks, inter alia: <hotelf1.com> (registered in 2004), <ibis.com> (registered in 1993), <ibishotels.com> (registered in 2001) as well as <novotel.com> (registered in 1997), all of which redirect to active websites in order to promote Complainant’s hotel business, products and services.

Respondent, who according to the WhoIs information is a resident of Iran, registered the disputed domain names as follows: <hotelf1.ir> on October 5, 2016, <ibistehran.ir> and <novoteltehran.ir> on February 15, 2016 and <novotelhotels.ir> on July 31, 2016. As of the time of the rendering of this decision, the disputed domain name <hotelf1.ir> apparently is not connected to any content on the Internet, while the disputed domain names <ibistehran.ir>, <novotelhotels.ir> and <novoteltehran.ir> all redirect to a typical “under construction” website.

Complainant has provided evidence that at some point before the filing of this Complaint the disputed domain name <hotelf1.ir> again could not be reached on the Internet, while the disputed domain names <ibistehran.ir>, <novotelhotels.ir> and <novoteltehran.ir> were all offered for sale.

In an attempt to settle this matter amicably, Complainant contacted both Respondent as well as the technical contact for all disputed domain names by registered letter as well as by email on January 9, 2017, requesting to voluntarily transfer the disputed domain names upon Complainant, with reminder communication following on January 16, 2017 as well as on January 23, 2017. All of this communication either could not be delivered or remained unanswered.

Complainant requests that the disputed domain names be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it was founded in 1967 and today is the world leader in economic and mid-scale hotels as well as a major player in upscale and luxury hospitality service with more than 4,200 hotels in 95 countries worldwide under more than 20 different brands.

Complainant submits that the disputed domain names are at least confusingly similar to Complainant’s HOTEL F1, IBIS and NOVOTEL trademarks as they reproduce Complainant’s trademarks in their entirety, merely adding the descriptive word “hotels” or the geographical element “Tehran”.

Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is not affiliated with Complainant in any way and has not been authorized to use and register Complainant’s trademarks or to seek registration of any domain names incorporating those marks, (2) Respondent obviously is not commonly known by Complainant’s trademarks which have been registered prior to the registration of all disputed domain names, (3) Complainant’s trademarks are so well-known that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names which is also confirmed by the fact that the disputed domain names at some point lead to inactive pages either with no content whatsoever or with the message “for sale”, and (4) Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services nor has Respondent shown any intention of noncommercial or fair use thereof.

Finally, Complainant argues that Respondent registered or is using the disputed domain names in bad faith since (1) Complainant’s trademarks are well-known throughout the world, including in Iran demonstrating why it is implausible that Respondent was unaware of Complainant and its trademarks when registering the disputed domain names, (2) the disputed domain names reproduce Complainant’s trademarks entirely, and, finally, (3) the passive holding of the disputed domain names does not preclude a finding of bad faith given the particular circumstances to this case including the strong reputation of Complainant’s trademarks in the absence of Respondent’s actual or contemplated good faith use together with the provision of apparently false contact details in the disputed domain names’ WhoIs contact information.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) That the disputed domain names have been registered or are being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names are at least confusingly similar to the HOTEL F1, IBIS and NOVOTEL trademarks in which Complainant has rights.

All disputed domain names incorporate one of Complainant’s HOTEL F1, IBIS, and NOVOTEL trademarks in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).¹ Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms, whether generic, descriptive or geographical, would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “Tehran” in the disputed domain names <ibistehran.ir> and <novoteltehran.ir> as well as of the generic or descriptive term “hotels” in the disputed domain name <novotelhotels.ir> does not dispel the confusing similarity arising from the incorporation of Complainant’s HOTEL F1, IBIS and NOVOTEL trademarks therein.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant’s HOTEL F1, IBIS and NOVOTEL trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the terms “Hotel F1”, “Ibis” and “Novotel”. Finally, Respondent obviously has not used the disputed domain names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose but rather, as for the domain names <ibistehran.ir>, <novoteltehran.ir> and <novotelhotels.ir>, to offer them for sale, and, with respect to the disputed domain name <hotelf1.ir>, not to redirect to any valid content on the Internet. In this context, the Panel notes that UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.)

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered or Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and/or are being used by Respondent in bad faith.

As a general rule, panelists have found that the nonuse of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine includes e.g.: the degree of distinctiveness or reputation of complainant’s mark, the fail of response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.

In the present case, Complainant contends, and Respondent has not challenged these contentions, that all of Complainant’s trademarks HOTEL F1, IBIS and NOVOTEL enjoy considerable reputation. Given that Respondent has registered a variety of domain names including a variety of Complainant’s trademarks, the Panel is willing to accept the plausibility of Complainant’s line of argumentation that Respondent most likely was aware of Complainant and its HOTEL F1, IBIS and NOVOTEL trademarks when registering the disputed domain names. Respondent, in turn, failed to submit any explanation as to why he still needed to rely on the inclusion of Complainant’s trademarks in the disputed domain names. On the contrary, at some point before the filing of this Complaint Respondent apparently offered at least the domain names <ibistehran.ir>, <novoteltehran.ir> and <novotelhotels.ir> for sale. Such use of the disputed domain names, which are confusingly similar with Complainant’s IBIS and NOVOTEL trademarks, to resolve to a website where these disputed domain names are offered for sale, is a clear indication that Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant at a price in excess of Respondent’s documented out-of-pocket costs. Such circumstances are evidence of registration and/or use of the disputed domain names <ibistehran.ir>, <novoteltehran.ir> and <novotelhotels.ir> in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Moreover, as for the disputed domain name <hotelf1.ir> which apparently has not been made active use of so far, the Panel finds it more likely than not given the overall circumstances to this case that Respondent aimed at targeting Complainant’s HOTEL F1 trademark when registering this disputed domain name.

In this context, the Panel has also recognized that Respondent not only kept silent on Complainant’s pre-procedural communication intended to settle this matter amicably, but that Respondent apparently also provided false contact information for the disputed domain names since some of this pre-procedural communication returned for e.g. an insufficient address. These facts at least throw a light on Respondent’s behavior which supports the finding of a registration and/or use of all disputed domain names in bad faith.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 names <hotelf1.ir>, <ibistehran.ir>, <novotelhotels.ir> and <novoteltehran.ir> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: June 25, 2018

¹ The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to apply UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian, WIPO Case No. DIR2018-0003.