WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Bronn Barnes

Case No. D2019-0159

1. The Parties

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

The Respondent is Bronn Barnes of Brighton, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <ibisstyleswalthamstow.xyz> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complain 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 January 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.

The Center appointed Frank Schoneveld as the sole panelist in this matter on March 4, 2019. 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.

On March 12, 2019, the Center received an informal email communication from the Respondent.

4. Factual Background

The Complainant is the registered owner of:

- European Union trademark for IBIS, No. 001527720, registered on June 6, 2001;
- European Union trademark for IBIS STYLES HOTEL, No. 013239702, registered on January 30, 2015;
- International trademark for IBIS, No. 541432, registered on July 17, 1989; and
- International trademark for IBIS STYLES HOTELS, No. 1097369, registered on September 13, 2011.

The Complainant operates the following domain names reflecting these trademarks:

- <ibis.com> registered on June 11, 1993;
- <ibishotels.com> registered on May 30, 2001;
- <ibisstyles.com> registered on August 24, 2011; and
- <ibisstyleshotels.com> registered on August 24, 2011.

The disputed domain name <ibisstyleswalthamstow.xyz> was registered on April 18, 2018.

The Complainant is a global hotel operator for economic and mid-scale hotels, and provides upscale and luxury hospitality services. The Complainant’s Ibis Styles London Walthamstow Hotel is one of 22 Ibis Styles hotels that the Complainant has in the United Kingdom.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that for more than 45 years it has provided expertise acquired in its core business of hotels and hospitality services and since its establishment in 1967, has acquired considerable reputation and goodwill worldwide. The Complainant says that, under its IBIS brand, it has 1,152 hotels worldwide in 67 countries, and that it is Europe’s leading economy hotel operator. The Complainant says that it has, using design, pop culture, and strong personality, formed a collection of hotels in a unique style, that it markets as “Ibis Styles” - counting more than 400 hotels in 45 countries worldwide, including 22 in the United Kingdom, one of which is the Ibis Styles London Walthamstow Hotel, an economy hotel which offers 191 rooms including 8 rooms for people with reduced mobility.

The Complainant contends that (i) the disputed domain name reproduces the Complainant’s trademark IBIS associated with the generic term “styles” while simultaneously reproducing part of its trademark IBIS STYLES HOTELS by omitting the term “hotels” and adding the geographical term “Walthamstow”, and (ii) the disputed domain name redirects to the fake online reservation page “ibisstyleswalthamstow.en-london.com” imitating the Complainant’s Ibis Styles London Walthamstow Hotel website, “www.accorhotels.com/gb/hotel-8063-ibis-styles-london-walthamstow/index.shtml ” – thus impersonating the Complainant. The Complainant says that, in September 2018 the Complainant sent cease-and-desist letters to the holder of the disputed domain name but the Respondent never replied despite several reminders and that, in view of the security threat posed by the disputed domain name to the Complainant’s customers, the Complainant had no other choice than to initiate an UDRP proceeding against the Respondent.

The Complainant submits that (a) it owns and operates several hotels under the trademarks IBIS and IBIS STYLES HOTELS, which are protected worldwide particularly in relation to hotels and restaurant services, and (b) these trademarks are well-known trademarks.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks IBIS and IBIS STYLES HOTELS in that the disputed domain name reproduces the Complainant’s trademark IBIS in its entirety, which previous panels have considered to be very well-known in the field of hotels and in many UDRP decisions, the panels considered that the incorporation of a trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s registered trademarks.

The Complainant argues that the disputed domain name <ibisstyleswalthamstow.xyz> reproduces entirely the trademark IBIS with the association of the generic term “styles”, and numerous UDRP decisions have established that adding a generic or descriptive term to the complainant’s trademark does not influence the similarity between a trademark and a domain name. The Complainant also argues that the disputed domain name partly reproduces the trademark IBIS STYLES HOTELS of Complainant by omitting the term “hotels”.

The Complainant notes that the disputed domain name <ibisstyleswalthamstow.xyz> reproduces the Complainant’s trademarks IBIS and IBIS STYLES with the addition of the geographical term “walthamstow” and theComplainant owns a hotel named “Ibis Styles London Walthamstow Hotel” which heightens the risk of confusion with the disputed domain name since Internet users may believe that it is endorsed by the Complainant. The Complainant argues that many other panels have consistently determined that a domain name which consists of a trademark combined with a geographical term is still confusing and does not provide additional specification or sufficient distinction from the Complainant or its trademarks.

The Complainant contends that the extension “.xyz” in the disputed domain name is a new generic Top-Level Domain (“gTLD”) extension, and therefore, the new gTLD is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name, because the mere adjunction of a gTLD such as “.xyz” or “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity.

The Complainant concludes that by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademarks and it is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant and thus may heighten the risk of confusion.

The Complainant contends that the Respondent has no prior rights or legitimate interests in the disputed domain name and that registrations of the IBIS and IBIS STYLES HOTELS trademarks preceded the registration of the disputed domain name by a number of years. The Complainant says that the Respondent is not affiliated with the Complainant in any way, and nor has the Respondent been authorized or licensed by the Complainant to use or register its trademarks IBIS and IBIS STYLES HOTELS or to seek registration of any domain name incorporating the aforesaid trademarks. The Complainant argues that prior panels have found that in the absence of any license or permission from the Complainant to use a widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

The Complainant submits that the Respondent is not commonly known by the disputed domain name or the name of “Ibis” and/or “Ibis Styles Hotels” and that there is simply no evidence that the Respondent may be commonly known by the name of “Ibis” and/or “Ibis Styles Hotels”. The Complainant further submits that the Respondent cannot assert that, before any notice of this dispute, the Respondent was using, or had made 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. The Complainant notes that the disputed domain name redirects to the fake online reservation page “ibisstyleswalthamstow.en-london.com ”, imitating the Complainant’s Ibis Styles London Walthamstow Hotel website, “www.accorhotels.com/gb/hotel-8063-ibis-styles-london-walthamstow/index.shtml” – thus impersonating the Complainant, and such imitation cannot provide the Respondent with rights or legitimate interests over the disputed domain name.

The Complainant submits that, to the best of the Complainant’s knowledge, the disputed domain name has never been used for any legitimate purpose and in this regard, the disputed domain name incorporates the Complainant’s well-known trademark IBIS and so the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

The Complainant contends that the Respondent never answered to the Complainant’s cease-and-desist letters and UDRP panels have repeatedly stated that when the respondent does not avail themselves of their rights to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the domain name.

The Complainant says that, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademarks and hotel named Ibis Styles London Walthamstow Hotel, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. The Complainant concludes that it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith stating that it is implausible the Respondent was unaware of the Complainant’s trademarks when registering the disputed domain name. The Complainant argues that bad faith can be found where the Respondent knew or should have known of the Complainant’s trademark rights and, nevertheless registered the disputed domain name in which the Respondent had no rights or legitimate interests.

The Complainant asserts that its IBIS trademark enjoys considerable goodwill and renown throughout the world and in this regard, several panels have previously acknowledged its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the said trademark and, furthermore, all search results obtained by entering the terms “IBIS”, “IBIS STYLES” in the Google search engine refer to the Complainant. The Complainant also asserts that (i) the disputed domain name reproduced the Complainant’s trademarks as well as the name of a hotel, Ibis Styles London Walthamstow Hotel, owned by the Complainant, strongly suggesting that the Respondent had the Complainant’s trademarks and hotel in mind when registering the disputed domain name, and (ii) the fact the Respondent reproduced the Complainant’s trademarks and pictures of Ibis Styles London Walthamstow Hotelon its website clearly demonstrates his knowledge of the Complainant’s rights.

The Complainant contends that bad faith can also be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Complainant asserts that the Complainant’s trademark rights significantly predate the registration date of the disputed domain name, which has been registered in 2018, and that prior panels deciding under the Policy have held that knowledge of a corresponding trademark at the time of the registration of a domain name is strong evidence of bad faith. The Complainant submits that it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products, however, the Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the disputed domain name in response to the Complainant’s cease-and-desist letters.

The Complainant also contends that given the Complainant’s goodwill and renown, and the nature of the disputed domain name, the Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of the Complainant’s goodwill and reputation, which clearly constitutes bad faith.

The Complainant argues that the Respondent uses the disputed domain name to direct Internet users to a fake online reservation page “ibisstyleswalthamstow.en-london.com”, imitating the Complainant’s Ibis Styles London Walthamstow Hotel website. The Complainant contends that the Respondent did everything to make the Respondent’s website look official and therefore created a strong likelihood of confusion for the Complainant’s customers who could believe that the disputed domain name directs to an official website offering online reservation to the Ibis Styles London Walthamstow Hotel, and such use of the disputed domain name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation and particularly from its trademarks IBIS and IBIS STYLES HOTELS for commercial gain. The Complainant argues that this cannot be considered as a use in good faith and such behavior results in customer diversion and unfair competition.

Finally, the Complainant asserts that, given the Complainant’s renown and goodwill worldwide and the nature of the disputed domain name itself, which reproduces the Complainant’s famous IBIS trademark in as much as imitating the Complainant’s Ibis Styles London Walthamstow Hotel website, there simply cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent, as any use would result in misleading diversion and unfair taking advantage of the Complainant’s rights. The Complainant concludes by requesting that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not submit any response to the Complainant’s contentions within the time limits set down by the Rules. By email of March 12, 2019, the Respondent sent an email to the Centre and the Complainant stating the following:

“I am coming to an understanding that might it is too late to take any action from my half.
This domain was puchased by mistake and wasn’t online for months. Actually it was not online already by that time when this complaint started. This why I have just realized right now that it was under dispute when I wanted to delete it. And now I found several email about this in my SPAM folder.
I don’t know where this arbitration going, but to accelerate the process and out of courtesy I am willing to give up my ownership of this domain. Right now I have block on it so I am not able to do so.
I am willing to eliminate it imediately as the block is lifted. Also I would like to point it out that this domain does not violate any trademark registration as it is and was online just for a very short period of time.
I hope that the offered solution is satisfactory and we can close this dispute as soon as possible.”

6. Discussion and Findings

The first issue for this Panel is whether to take into account the email sent by the Respondent on March 12, 2019. According to paragraph 5(a) of the Rules, the Respondent must provide the Response within 20 days of the date of commencement of these proceedings. The Respondent’s email of March 12, 2019 was three weeks after February 19, 2019 which was the last day for receipt of a Response after the commencement date of proceedings on January 30, 2019. The commencement date being the date on which the Centre completed its responsibilities in connection with sending the Complaint to the Respondent (see paragraph 4(f) of the Rules). The Respondent’s email of March 12, 2019 does not contain the information, elections or statements required by paragraph 5(c) of the Rules so that the Respondent’s email cannot be considered a Response within the meaning of the Rules. Further, there is no request to extend the period of time for filing of the Response.

According to paragraph 10 of the Rules, the Panel has certain general powers including that the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, but also that the proceeding takes place with due expedition which may include extending, in exceptional cases, a period of time fixed by the Rules. In view of the fact that the Respondent has not submitted anything other than the email of March 12, 2019, the Panel is of the view that the Respondent has had ample time to provide a Response and given that the Respondent has made no specific request to extend the time to submit a Response, the Panel does not extend the time to file a Response. At the same time, to better ensure that each Party is given a fair opportunity to present its case, and without unduly delaying an expeditious conclusion of this proceeding, the Panel decides to admit the Respondent’s submissions set out in the Respondent’s email of March 12, 2019. The Complaint already addresses the Respondent’s submissions in the email of March 12, 2019 so that the Complainant requires no further opportunity to reply to the Respondent’s email.

Pursuant to UDRP paragraph 4(a), in order to have the disputed domain name transferred the Complainant must prove that each of the following three elements is present:

(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 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

The disputed domain name <ibisstyleswalthamstow.xyz> reproduces the Complainant’s trademark IBIS as well as reproducing part of its trademark IBIS STYLES HOTELS by omitting the term “hotels” and adding the geographical term “Walthamstow” a district of London in the United Kingdom. The inclusion of “Ibis” and “Ibis Styles” in the disputed domain name with one other word makes the disputed domain name similar to the Complainant’s trademarks. In the Panel’s view the deletion of the word “Hotels” and addition of a geographical name to the main part of the Complainant’s trademark IBIS STYLES HOTELS would make the disputed domain name confusingly similar to the Complaint’s trademark IBIS STYLES HOTELSand the difference does not prevent a finding of confusing similarity to the Complainant’s trademark IBIS STYLES HOTELS. Further, the mere adjunction of the gTLD “.xyz” does not affect this assessment of confusing similarity. The Panel therefore concludes that the disputed domain name is confusingly similar to the Complaint’s trademark IBIS STYLES HOTELS.

B. Rights or Legitimate Interests

The evidence provided by the Complainant indicates that (i) the Respondent has no connection or affiliation with the Complainant; (ii) the Respondent has no license or permission from the Complainant to use any part of the Complainant’s trademarks in a domain name; and (iii) registration of the Complainant’s trademark IBIS STYLES HOTEL in Europe preceded by more than 3 years, and international registration for IBIS STYLES HOTELS by more than 5 years, the registration of the disputed domain name.

In the Respondent’s email of March 12, 2019 the Respondent did not indicate that it had any rights or legitimate interests in any of the disputed domain name stating that it was “purchased by mistake” and it was very willing “to give up my ownership of this domain” and to “eliminate it immediately”. It is surprising the Respondent has not even suggested it has any rights or legitimate interests in the disputed domain name. It can normally be expected that if the Respondent had any rights or legitimate interests in the disputed domain name the Respondent would at least suggest such an interest however the Respondent has not done so. Further, the Panel notes that the Respondent’s name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel that suggests the Respondent might otherwise has rights or legitimate interests in the disputed domain name.

In view of the above, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name reproduced the name of the Complainant’s hotel “Ibis Styles London Walthamstow”, and the webpage to which the disputed domain name was directed, reproduced the Complainant’s trademarks IBIS and IBIS STYLES HOTELS and included pictures of the Complainant’s hotel Ibis Styles in Walthamstow, United Kingdom. The Respondent’s email of March 12, 2019 does not deny this, stating only that “this domain does not violate any trademark registration as it is” and that the “domain … was online just for a very short period of time”. This appears to be an admission that the Respondent knew of the Complainant’s trademark in IBIS STYLES HOTELS but that it was of the view that use of part of the Complainant’s trademark in the disputed domain name did not violate any trademark rights. Given that the Complainant’s trademark was registered some years before and that it appears the Respondent actually knew of the trademark IBIS STYLES HOTELS, the Panel finds that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark in IBIS STYLES HOTELS.

The Respondent’s knowledge at registration of the Complainant’s trademark IBIS STYLES HOTELS, together with (a) the subsequent link on the website to which it resolved having pictures of the Complainant’s hotel and (b) the means of making bookings for the hotel through a mechanism not authorized by the Complainant, strongly suggests that the disputed domain name was registered with the intent to create an impression of an association or affiliation with the Complainant and more particularly its hotel in Walthamstow in the United Kingdom. This is also evidence, not denied by the Respondent, that the Respondent uses the disputed domain name to direct Internet users to a fake online reservation page imitating the Complainant’s Ibis Styles London Walthamstow Hotel website, with this fake online reservation page made to look very like the Complainant’s official website. This would likely confuse the Complainant’s customers who would believe that the disputed domain name directs to an official website offering online reservation to the Ibis Styles London Walthamstow Hotel. Such use of the disputed domain name indicates the Respondent’s intention, for commercial gain, to benefit from the Complainant’s reputation and trademark in IBIS STYLES HOTELS.

The Panel finds that (in the meaning of paragraph 4(b) of the Policy) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website to which the disputed domain name is directed, by creating a likelihood of confusion with the Complainant’s trademark IBIS STYLES HOTELS as to the source, sponsorship, affiliation or endorsement of the Respondent’s website to which the disputed domain name is directed. In view of the above, there is evidence of registration and use of the disputed domain name in bad faith. Consequently, the Panel finds that the disputed domain name has been registered and is being used 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 disputed domain name <ibisstyleswalthamstow.xyz> be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: March 25, 2019