WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Above.com Domain Privacy, David Smith / Domain Admin, Huanglitech

Case No. D2012-0272

1. The Parties

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

The Respondent is Above.com Domain Privacy, David Smith of Beaumaris, Australia / Domain Admin, Huanglitech of Shenzhen, China.

2. The Domain Name and Registrar

The disputed domain name <accorhotel-asia.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 14, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 15, 2012, Above.com, Inc. 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 Complainant on February 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 20, 2012.

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 February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.

The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on March 21, 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

The Complainant is a major player in hospitality services. It has been operating economic to upscale hotels for more than forty years. The Complainant operates more than 4,200 hotels in 90 countries worldwide. It is in particular present in 19 Asian countries with 445 hotels.

The Complainant owns the websites “www.accor.com” and “www.accorhotels.com”, where Internet users may book and find hotels rooms, among other services.

The Complainant received the Tourism for Tomorrow Award 2010 from the World Travel and Tourism Council.

The Complainant owns trademark registrations including, among others, an International registration for the mark ACCOR & design (No. 953507) of August 16, 2007, designating in particular Australia and China, and protected in classes 9, 16, 35, 36, 41 and 43.

The disputed domain name was registered on October 15, 2009.

On March 1, 2010, the Complainant sent a cease-and-desist letter to the Respondent, requesting the communication of the registrant’s identity and the cancellation of the disputed domain name. A person named David Smith responded to this letter on March 2, 2010, proposing to transfer the disputed domain name in exchange of USD 200 to cover “registration and administrative fees”.

The Complainant provided evidence of prior interactions with David Smith in three matters involving the Complainant’s trademarks. David Smith had for instance requested USD 500 in exchange of the transfer of the domain name <experienceaccor.com>. The Complainant had also agreed to pay USD 100 for the domain name <sofitelseminyak.com> and USD 75 for the domain name <mercurecarcassone.com>. This time, the Complainant replied to David Smith by an email of refusal followed by a reminder and a cease-and-desist letter on May 18, 2010. No response was apparently received.

The disputed domain name resolved at the time of notification of the Complaint to parking pages displaying sponsored links related to hotels.

5. Parties’ Contentions

A. Complainant

First, the Complainant contends that the disputed domain name is identical or at least confusingly similar to its well-known trademark ACCOR, as it reproduces the term “Accor” in its entirety and associates such term with the generic term “hotel” referring to the Complainant’s business and with the term “asia” suggesting that the disputed domain name relates to the Complainant’s activities in Asia.

Second, the Complainant asserts that the Respondent is not affiliated with it and has not been authorized by it to register or use the disputed domain name. The Complainant contends also that the disputed domain name is so similar to the Complainant’s well-known mark that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain name. Furthermore, the Complainant contends that the Respondent is not known by the disputed domain name and that the disputed domain name is not used in connection with a bona fide offering of goods or services. The Complainant asserts as a consequence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Third, the Complainant contends that the disputed domain name was registered and used in bad faith. Indeed, it is implausible according to the Complainant that the Respondent was unaware of the Complainant’s trademark ACCOR when it registered the disputed domain name, because such trademark is well-known and associated in the disputed domain name with generic and geographic terms referring to the Complainant’s business. The Complainant further asserts that the Respondent has engaged in a pattern of registering domain names with the Complainant’s trademarks in order to resell them to the Complainant for a price exceeding the registration and administrative fees. Finally, the Complainant contends that the Respondent has engaged in a pattern of abusive registration, infringement and cybersquatting, as evidenced by decisions of UDRP panels ordering the Respondent to transfer the domain name at issue to the respective complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

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

A. Identical or Confusingly Similar

The Complainant has established that it has rights to word/design trademark registrations in which the term “Accor” is the sole verbal element.

For the purpose of assessing the similarity between the Complainant’s trademark and the disputed domain name <accorhotel-asia.com>, it is appropriate to compare the term “Accor” to said domain name and to leave aside the design elements of the trademark, as “it is a matter of impression in each case as to whether a domain name can be confusingly similar to a trade mark that includes a logo or graphic element” (Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton, WIPO Case No. D2010-0509). The design elements of the Complainant’s trademark (consisting of two stylized small birds depicted on the left side of the word “Accor”) may be ignored in this context, as they cannot be reproduced in a domain name and as they are not particularly striking compared to the distinctive word element “Accor”.

The disputed domain name reproduces the term “Accor” in its entirety, and combines it with the terms “hotel” and “asia”. The term “hotel” is generic and devoid of distinctiveness. The term “asia” refers directly to a geographic region. Far from lessening a likelihood of confusion with the Complainant's trademark, the presence of these terms only reinforces the similarity between the disputed domain name and the trademark, as they are closely related to the field of business of the Complainant, whose services are provided in Asia, among other geographic locations.

It is the general view among WIPO Panels that the addition of merely generic, descriptive, or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see for example Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No.D2001-0110, <ansellcondoms.com>, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, <ebaymoving.com>, Mövenpick Holding AG v. Robin King / Domain Discreet, WIPO Case No. D2011-2132, <moevenpick-shanghai.com>).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use its trademark in the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.

The Complainant has provided evidence showing that the Respondent has used the disputed domain name in connection with a website featuring sponsored links. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is does not confer any rights or legitimate interests in the domain name (see Woolworths Limited v. DomainAdminkPrivacyProtect.org/Smvs Consultancy Privacy Limited, WIPO Case No. D2010-1046, Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695).

Furthermore, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has thus satisfied the condition set forth in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent certainly knew of the Complainant’s trademark when it registered the disputed domain name, and that the choice of the term “accor” is not a coincidence. The notoriety of the trademark ACCOR has been recognized in several UDRP decisions (Accor v. JE Jeong, WIPO Case No. DCO2010-0040, Accor v. Maixueying Jokemine,WIPO Case No. D2010-2233, Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257). The association of this term with generic and geographic words referring directly to the Complainant’s services likewise establishes in this Panel’s view that the Respondent was aware of the Complainant’s activities. If the Respondent had any doubt about the protection of the term “Accor” in the field of hotel-related services, a simple trademark search would have revealed the Complainant’s trademark registrations.

Furthermore, the Respondent has used the disputed domain name in connection with a website featuring sponsored links that relate to hotels, whereas the Complainant has been operating hotels for many years, including in Asia. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark.

Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199, Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149, Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).

Also, the Respondent appears to have engaged in a pattern of registering domain names which reproduce trademarks of the Complainant, with the purpose of reselling them to Complainant for a price exceeding the Respondent’s out-of-pocket expenses. This behavior also amounts to registration and use of a domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

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-asia.com> be cancelled.

Anne-Virginie La Spada-Gaide
Sole Panelist
Dated: April 4, 2012