WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Mao Jian Ting

Case No. D2012-0189

1. The Parties

The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Mao Jian Ting of Wenzhou, Zhejiang, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <accorhotel.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2012. On February 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2012, 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. On February 13, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding, and the Respondent requested the Complaint be translated into Chinese. On February 13, 2012, the Center acknowledged receipt of the email communications from both Parties and requested the Respondent to comment on the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Response was filed with the Center on February 23, 2012.

The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on March 27, 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

4.1 The Complainant has claimed that it is the world leader in economic and mid-scale hotels and has provided customers with expertise acquired in this core business for more than 40 years. It also claimed, without providing evidence, that it operates more than 4,200 hotels in 90 countries worldwide; over 500,000 rooms and that “[t]he group includes notable hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS.”

4.2 The Complainant has however provided evidence to show that it is present in China where it has 102 hotels and where it employs 18,144 employees. It has also provided evidence that it was one of the first international hotel management companies to enter China, as early as 1985. The Complainant has also demonstrated that it maintains web sites under the domain names <accorhotels.com> and <accor.mobi>.

4.3 The Complainant has also provided evidence to show that prior to commencing the present administrative proceeding, the Complainant had sent a cease-and-desist letter by email and by registered letter based on its trademark rights on July 22, 2009, requesting the Respondent to cease the use of the disputed domain name and to transfer it to the Complainant. The Respondent had replied quickly that he was willing to transfer the disputed domain name and did not mention that he would do so with pecuniary consideration. There was then a series of communications culminating in the reply by the Respondent on August 25, 2011 that the disputed domain name was available for sale at an amount of 5,500 Euros.

4.4 The disputed domain name <accorhotel.mobi> was registered on July 1, 2009, and currently resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed domain name <accorhotel.mobi> is confusingly similar to ACCOR in which it holds rights for the following reasons:

(i) The Complainant submits that the Respondent is using the disputed domain name to confuse consumers into believing that the Respondent’s website at the disputed domain name is an official website of the Complainant and/or the Respondent is affiliated with the Complainant.

(ii) The Complainant submitted that previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. The Complainant submitted that the addition of the term “hotel” tends to compound the confusion. The sole adjunction of the term hotel is not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademark. The confusion is only heightened by adding the generic word “hotel”, because the term is descriptive of the services provided by the Complainant in relation to the trademark.

(iii) Finally, the Complainant submitted that the mere addition of the generic “.mobi” extension is irrelevant as it is well established that the generic top level domain is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant’s trademark and the disputed domain name. Previous UDRP panels have ruled that the specific top level of a domain name such as “.mobi” does not serve to distinguish the domain name from the trademark, citing the, AREVA v. Sujuan Jiang, WIPO Case No. D2010-2119.

5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name for the following reasons:

(i) The Respondent has no connection or affiliation with the Complainant and has not received any license. The Respondent has never been known by the disputed domain name and has no rights or legitimate interests in the name “Accor”. The Complainant has never licensed or given authorization of any other kind to the Respondent to use the trademark ACCOR or to seek registration of any domain name incorporating the said trade marks.

(ii) The Respondent has no prior rights or legitimate interests in the disputed domain name. The Complainant asserted that the registration of several ACCOR trademarks preceded the registration of the disputed domain name <accorhotel.mobi> for years.

(iii) The sole objective of Respondent in choosing the disputed domain name that incorporates the trademark ACCOR and adding the generic term “hotel” is to benefit from the reputation of the trademark ACCOR.

(iv) The Complainants attempted to contact the Respondent by sending two cease-and-desist letters to which Respondent replied and claimed that disputed domain name was for sale at an amount of 5,500 Euros. The Complainant argued that this answer shows that Respondent has no legitimate interests to register the disputed domain name as the amount of money claimed exceeds by far his out-of-pocket expenditures.

(v) The Respondent never explained why the disputed domain name incorporates the Complainant’s ACCOR trademark.

5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:

(i) The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the ACCOR Marks. The Complainant stated that it was inconceivable that the Respondent was unaware of the Complainant’s ACCOR trademarks as the Complainant’s trademarks are well known worldwide.

(ii) The Complainant stated that the selection of the disputed domain name, which wholly incorporates the ACCOR trademark, cannot be a coincidence as “Accor” is not a descriptive or generic term. The Complainant submitted that the addition of the term “hotel” clearly proves that the Respondent was aware of the existence of the Complainant’s trademarks. Given the fact that the Complainant had miscellaneous hotels in China and was present in the country since 1985, it was impossible that the Respondent did not have the Complainant’s trademark in mind while registering the disputed domain name.

(iii) The Complainant also submitted that the use of the disputed domain name suggests that the Respondent was perfectly aware of the Complainant and its ACCOR marks. The Respondent’s use of the disputed domain name will cause consumers to mistakenly believe that the website at <accorhotel.mobi> is owned by the Complainant.

(iv) The disputed domain name resolves to an inactive page and that previous UDRP panels have already considered that passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy. In such cases the panel must give close attention to all the circumstances of respondent’s behavior.

(v) The Respondent had, without valid consent or license, utilised the disputed domain name <accorhotel.mobi>.

5.4 The Complainant requests a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

5.5 The Respondent provided its formal response to the Complainant’s contentions on February 23, 2012 in the Chinese language.

5.6 The Respondent explained that he could not properly understand the Complaint in English that had been made against him and that he could only guess some of the issues that had been made against him. He claimed to have asked for the Complaint to be translated into the Chinese language several times but this was not provided. He claimed that this was very unfair to him as a non-English speaking Chinese individual.

5.7 The Respondent claimed that he did not know about when the Complainant had first established its presence in China and had only realized that they were a famous hotel chain when he received the Complaint. The Respondent submitted that the Complainant might be very famous in other countries but not in China. The Respondent claimed to reside in Wenzhou, a city in the Southern part of China, which is a famous business city in China, but he could not even find the Complainant’s Accor hotel there. The Respondent claimed that the disputed domain name was registered in 2009 and claimed that was the time when China first started the 3G Internet network.

5.8 The Respondent claimed that since “Acc is the abbreviation of Hi-Tech” he and his unidentified “friends” first discussed the idea and came up with the concept of “Acc or Hotel” meaning “Hi-Tech makes Office like Hotel” or “Hi-Tech provides us a relaxed and happy environment for work”. The Respondent therefore registered the disputed domain name <accorhotel.mobi> to be used as a platform for pushing forward this idea. Due to the limited resources, however, the website is still under construction, but the Respondent has invested money and hard work in this for one year.

5.9 The Respondent claimed that the Complaint does not satisfy the Policy, therefore the Complainant’s request to transfer the disputed domain name should be denied, because of the following reasons:

(i) The Respondent has legally registered and is using the disputed domain name in good faith, therefore there is no conflict with the Complainant’s trademark rights, and there is no possibility of confusion, and will not mislead the public.

(ii) The Respondent claimed that he has rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name to establish a platform for technology communication. “Acc is the abbreviation of Hi-Tech”. With the concept of “Acc or Hotel” in mind, which means “Hi-Tech makes Office like Hotel” or “Hi-Tech provides us a relaxed and happy environment for work”, the Respondent registered the disputed domain name <accorhotel.mobi>. Due to the limited resources, however, the website is still under construction, but the Respondent has invested money and hard work in this for one year.

(iii) the Complainant could not prove that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent did not understand the emails sent by the Complainant. The Respondent registered the disputed domain name for self usage, so the Respondent did not know others could object it, therefore he used the “Chinese method” to decline the emails. The Respondent claimed that he never owned the email address […]@qq.com and never entrusted anyone to sell the disputed domain name, therefore he never sells the disputed domain name for commercial gains. In opposite, this indicates the bad faith on the Complainant’s part in trying to hijack the disputed domain name from the Respondent.

(iv) The Complainant cited and relied upon a lot of prior UDRP cases in the Complainant, which appears that the Complainant attaches great importance to domain names, however, the Complainant did not really appreciate the domain name or they would have registered it earlier to protect the disputed domain name. The Complainant registered the ACCOR trademark in 2005, and then the disputed domain name <accorhotel.mobi> was registered in 2009, which means the Complainant could have registered, but did not do so for three years, and the Complainant has not objected the registration of the disputed domain name for another three years. The Respondent claimed the disputed domain name with the gTLD “.mobi” should not be transferred to the Complainant only because the Complainant has registered the domain name <accor.com> with the gTLD of “.com”. This is an example of reverse domain name hijacking and the Complaint was filed in bad faith.

6. Discussion and Findings

6.1 The Complaint was filed in the English language. On February 13, 2012, the Center transmitted by email to the Parties in both Chinese and English regarding the language of proceedings. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

6.2 In this case, the Center has been informed by the Registrar that the language of the registration agreement for the disputed domain name is Chinese. The Complainant has asserted its request that English should be the language of proceedings, and the Respondent has requested the Complaint be translated into Chinese.

6.3 The Panel would like to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in English by itself is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. This has been ruled in previous UDRP decisions including in the case of Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918. It would be in fact a very poor argument for the Complainant to submit that because it is located in France and has no knowledge of the Chinese language, it should pick a different language to deal with a legal case that it had itself initiated. The fact that the Complainant has to retain specialised translation services at a cost that is likely to be higher than the overall cost for the present proceeding is not a legal reason at all that can be accepted by this Panel. At the end of the day, it is up to any complainant to secure the services of counsel that can communicate in the language in which the language of the registration agreement is to be based.

6.4 What is deemed to be fair to one party may be deemed to be unfair to the other party. It is a fundamental rule of the UDRP administrative proceedings that a party should be allowed to present his case. In the event that the language of the administrative proceeding has to be held in a particular language for the “costs convenience” of one party, thereby depriving the other party of being entitled to communicate in the language set down by the Rules, this is unfair and inequitable.

6.5 Had this been a truly contested matter, the Respondent may have been likely to have been entitled to expect a panel to rule that the language of the proceedings should be Chinese, in strict adherence to paragraph 11 of the Rules. However, in the present case, the Panel is not convinced that the Respondent does not understand English because it has communicated with the Complainant in the two cease and desist letters and had at each stage increased its price demands to transfer the disputed domain name. Considering the composition of the domain name, the prior email communications in English between the Parties, and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not comment on the language of the proceedings before the specific due date, and he has successfully participated in this administrative proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Chinese language documents submitted have also been reviewed by the Panel.

6.6 Paragraph 4(a) of the Policy requests a complainant to prove:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

6.7 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.8 The Complainant has appended to the Complaint a long list of registered trademarks and registered domain names that incorporate the trademark ACCOR. It is quite clear that the Complainant is the owner of a number of trademarks and domain names in several countries that simply comprise the word “Accor”. The Panel finds the Respondent’s registration consisting of the use of the Complainant’s trademark ACCOR causes confusing similarity. Previous UDRP decisions pronounced in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale,WIPO Case No. D2006-0066 had decided that the addition of generic words such as “hotel” was not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights.

6.9 The Respondent claimed that he does not understand English and the disputed domain name was registered based on an idea of “Acc or Hotel”. “Acc is the abbreviation of Hi-Tech”. Therefore “Acc or Hotel” means “Hi-Tech makes Office like Hotel” or “Hi-Tech provides us a relaxed and happy environment for work”. The Respondent did not submit evidence to prove this argument, nor did he explain clearly to this Panel why “Acc is the abbreviation of Hi-Tech”, and the Panel does not believe that the Respondent and his unidentified “friends” could have by themselves invented and come up with the concept name of “accorhotel.mobi” without prior knowledge of the Complainant’s Accor Hotel. This then leads on to the unrealistic argument that a non-English speaker could have come up with the name Accorhotel without already having heard of the hotel chain of Accor hotels. In the circumstances, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.10 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for ACCOR are well-known throughout the world, registered and is present in China, where the Respondent is located. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its domain name with ACCOR trademark. The Panel accepts that such activity clearly does not provide the Respondent with a right or legitimate interest in the disputed domain name.

6.11 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among UDRP panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.

6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001). As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).

6.13 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the domain name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant’s mark.

6.14 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

6.15 The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the ACCOR Marks. The Complainant further complained that it was inconceivable that the Respondent was unaware of the Complainant rights in the ACCOR Marks. Other than an implied awareness, the Complainant had not provided any factual basis to support this conclusion. As such, the Panel is unable to accept this first part of the Complainant’s circular submission.

6.16 The Complainant then submitted that the selection of the disputed domain name, which wholly incorporates the ACCOR Marks could not have been a coincidence as “Accor” is not a descriptive or generic term and that it is a famous and well known trademark. The Panel accepts this line of submission and accepts the contention that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and its use of the ACCOR Marks. The Panel accepts the Complainant’s submission that the Respondent is using the disputed domain name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark.

6.17 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.18 Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website, The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.19 The Panel agrees with the submission of the Complainant that the attempt by the Respondent to keep on increasing the price for the disputed domain name does point to the conclusion that the Respondent has acted in bad faith and has been seeking to make money from registering the <accorhotel.mobi> domain name.

6.20 Had the Respondent simply ignored the cease and desist letters of the Complainant, this would not have not given any weight at all to any contention of the Complainant that the failure on the part of a respondent to respond to such several letters and mails would automatically amount to bad faith. If the Respondent had received a “cease and desist letter” whether in Chinese or English and did not respond, a panel should not automatically reach the conclusion that there is bad faith. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case. However in this particular case, the Respondent did respond and did expose its own bad faith by asking for sums of monies that are far in excess of registration fees for the disputed domain name.

6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the disputed domain name in bad faith.

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 domain name <accorhotel.mobi> be transferred to the Complainant.

Dr Colin Yee Cheng Ong
Sole Panelist
Dated: April 19, 2012