WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor and So Luxury HMC v. Whois Privacy Services Pty Ltd, Domain Hostmaster / Jason Bond
Case No. D2014-0558
1. The Parties
The Complainants are Accor and So Luxury HMC of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Services Pty Ltd, Domain Hostmaster of Fortitude Valley, Queensland, Australia / Jason Bond of Kowloon, Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <grandmercurebeijingcentral.com>, <grandmercuredongguanhoujie.com>, <grandmercuredongguanhumen.com>, <grandmercureshanghaihongqiao.com>, <grandmercurexianrenminsquare.com>, <ibisdongguandongcheng.com>, <ibishotelchengdu.com>, <ibissuzhou.com>, <mercurechengdunorth.com>, <mercureonrenminsquarexian.com>, <mercuresuzhouparkhotel.com>, <novotelbeijingpeace.com>, <novotelbeijingxinqiao.com>, <novotelshenzhen.com>, <pullmandongguanchangan.com>, <pullmandongguanforum.com>, <sofitelxianonrenminsquare.com> are registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2014. On April 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2014, 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 April 22, 2014 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 April 24, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on June 5, 2014. 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 own and operate hotels. The Complainant Accor (“Accor”) owns trademark registrations for GRAND MERCURE, IBIS, MERCURE, NOVOTEL, and PULLMAN. The Complainant So Luxury HMC (“So Luxury”) owns trademark registrations for SOFITEL. So Luxury is a subsidiary of Accor. The Complainants use these trademarks in relation to hotel and restaurant services, operating more than 3,500 hotels in Europe, Africa, the Middle East, Asia Pacific, North America, and South America. The Complainants have been in business for many years, and are well-known in the hospitality industry.
The disputed domain names were registered on various dates between May 13, 2013 and July 24, 2013, according to relevant information in the concerned Registrar’s WhoIs database. Prior to the filing of the Complaint on April 7, 2014, the Registrar’s WhoIs records had identified Whois Privacy Services Pty Ltd, Domain Hostmaster (“Whois Privacy Services”) as the registrant.1 When responding to the Center’s request for register verification on April 8, 2014, the Registrar disclosed Jason Bond as the current registrant.
At the time the Complainants became aware of the registrations, the disputed domain names resolved to parking pages populated with advertising links. The Complainants sent a cease and desist letter to Whois Privacy Services. The Complainants subsequently received a communication from an individual using the name “Jason”, who indicated that he could not control the uses his clients made of the domain names, but would warn them to get authorization from the Accor group prior to further use of the domain names. The disputed domain names currently do not resolve to active websites, but as the disputed domain names have not been cancelled, the Complainants filed the instant Complaint.
5. Parties’ Contentions
A. Complainants
The Complainants submit that the GRAND MERCURE, IBIS, MERCURE, NOVOTEL, PULLMAN, and SOFITEL marks (collectively referred to hereafter as “Complainants’ Marks”) are well-known marks, protected worldwide in relation to hotels and restaurants. The Complainants maintain that the disputed domain names are confusingly similar to the Complainants’ Marks because each incorporates one of these marks in its entirety. According to the Complainants, the inclusion in the disputed domain names of geographic references does not dispel this confusing similarity, particularly where the geographic references correspond to locations of the Complainants’ hotels. The Complainants further observe that in prior UDRP decisions panels have found the Complainants’ Marks to be well-known, citing ACCOR v. Domain ID Shield Service Co., Limited / Mr. Sakol Yoowiwat, WIPO Case No. D2012-0018; Accor and So Luxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243; and Accor, So Luxury HMC v. Yin Wei Fen, WIPO Case No. D2012-0553.
The Complainants maintain the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants submit that protectable rights were established in their marks long before the Respondent registered the disputed domain names. The Complainants aver that the Respondent is not affiliated with the Complainants, has not been authorized to use the Complainants’ Marks or to register domain names incorporating those marks, and has not been commonly known by the disputed domain names. The Complainants contend that the Respondent registered the disputed domain names in order to exploit and profit from the Complainants’ Marks by attracting Internet users to websites containing pay-per-click advertising links. The Complainants thus assert that the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondent’s use does not qualify as a noncommercial or fair use of the disputed domain names.
Taking into account the foregoing, the Complainants further contend that the Respondent registered and is using the disputed domain names in bad faith. The Complainants finds it implausible that the Respondent was not aware of the Complainants’ Marks when registering the disputed domain names, particularly given that, according to the Complainants, the marks are well-known throughout the world, including China, and given that the disputed domain names include geographic terms that correspond to regions in China where the Complainants operate hotels.
The Complainants’ submit that the very use of a domain name so obviously connected with a well-known mark by one having no connection with the mark strongly suggests opportunistic bad faith, and that the Respondent’s use of the Complainants’ well-known marks to attract Internet users to a website for commercial gain constitutes a bad faith use under the Policy. The Complainants submit that the Respondent’s primary motive in registering and using the disputed domain names was to capitalize or otherwise take advantage of the Complainants’ rights through the creation of initial interest confusion.
The Complainants further argue that the Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith in the circumstances of this case. The Complainants maintain that all of the elements supporting a finding of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are present in the instant case as well. Further, according to the Complainants, it is likely that the Respondent registered the disputed domain names to prevent the Complainants from registering domain names corresponding to the Complainants’ Marks.
The Complainants request that the disputed domain names be cancelled.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Multiple Complainants
Neither the Policy nor the Rules expressly provide for the consolidation of multiple Complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985. A number of UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against a respondent, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 and panel decisions cited therein.
The Complainants have requested consolidation. The Panel notes that the Complainant So Luxury is a subsidiary of the Complainant Accor, and that the Complaint clearly sets forth a common grievance against the Respondent affecting the Complainants’ rights and interests in a similar fashion. In such circumstances the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single Complaint.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainants’ Marks, in which the Complainants have established rights through registration and use. In considering this issue, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain names each incorporate one of the Complainants’ Marks in its entirety. The inclusion of geographic terms in the Panel’s view is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainants’ Marks.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names incorporate the Complainants’ Marks and are confusingly similar. It is undisputed that the Respondent has not been authorized to use the Complainants’ Marks. The Respondent nevertheless has registered and used the disputed domain names for what appear to be pay-per-click parking sites.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainants and the Complainants’ Marks when registering the disputed domain names. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainants’ Marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain names would be linked to the Complainants’ website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainants. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel therefore does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainants’ Marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainants and the Complainants’ Marks when registering the disputed domain names. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainants’ trademark rights through the creation of Internet user confusion. The record reflects that the Respondent has registered and used the disputed domain names in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainants’ Marks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
That the Respondent now appears to be passively holding the disputed domain names does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainants’ Marks have a strong reputation, are widely known, and are not generally susceptible to use in a generic sense. As in Telstra there is no evidence of any actual good faith use of the disputed domain names by the Respondent, or of any demonstrable preparations by the Respondent to make a good faith use of the disputed domain names. In addition, the particular circumstances of this case suggest that the Respondent may well have attempted to conceal his true identity though the use of a privacy service.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
The Complainants have requested the cancellation of the dispute domain names. 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 listed below be cancelled:
<grandmercurebeijingcentral.com>,
<grandmercuredongguanhoujie.com>,
<grandmercuredongguanhumen.com>,
<grandmercureshanghaihongqiao.com>,
<grandmercurexianrenminsquare.com>,
<ibisdongguandongcheng.com>,
<ibishotelchengdu.com>,
<ibissuzhou.com>,
<mercurechengdunorth.com>,
<mercureonrenminsquarexian.com>,
<mercuresuzhouparkhotel.com>,
<novotelbeijingpeace.com>,
<novotelbeijingxinqiao.com>,
<novotelshenzhen.com>,
<pullmandongguanchangan.com>,
<pullmandongguanforum.com>,
<sofitelxianonrenminsquare.com>.
William R. Towns
Sole Panelist
Date: June 19, 2014
1 The concerned Registrar, Fabulous.com Pty Ltd, offers privacy protection services through Whois Privacy Services Pty Ltd.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.