WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Cybernet Systech Private Limited

Case No. D2019-0438

1. The Parties

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

The Respondent is Cybernet Systech Private Limited of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <midaccor-mail.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2019.

The Center appointed James Bridgeman as the sole panelist in this matter on April 3, 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.

4. Factual Background

The Complainant is a major hotel operator founded in 1967 that carries on business using the ACCOR service mark in numerous jurisdictions across the world including India.

The Complainant is the registered owner of a portfolio of registrations for the ACCOR service mark and relies in in particular upon its rights in:

- Indian Trademark No 2285337, dated February 17, 2012, and covering services in classes 35 and 43;
- Indian Trademark “ACCORHOTELS” No 2250198, dated December 15, 2011, and covering services in class 43;
- International Trademark “ACCOR” No. 742032, registered on August 25, 2000, designating, inter alia, China, Germany, Egypt, Italy, and the Russian Federation, and covering services in class 38.

Additionally, the Complainant is the owner of the domain name <accor.com>, which was registered on February 23, 1998, and has established its principal website at “www.accorhotels.com”.

In the absence of a Response, the only information available about the Respondent is that which is supplied in the Complaint and the Registrar’s response to the enquiry from the Centre upon receipt of the Complaint.

The disputed domain name was registered on January 23, 2018, and resolves to a parking page with monetised links.

A WhoIs database search conducted by the Complainant on March 30, 2018, revealed that the disputed domain name was first registered through the privacy shield namely “Compsys Domain Solutions Private Limited”.

5. Parties’ Contentions

A. Complainant

In a very detailed and well referenced Complaint, the Complainant claims that it has acquired considerable reputation and goodwill worldwide, including India, where the Respondent purports to be established, in the use of the ACCOR service mark in association with its hotel and hospitality business. It operates more than 4,500 hotels in 109 countries worldwide and around 660,500 rooms including hotel chains such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure, and Ibis. In India, it has 50 hotels located in more than 20 regions, with approximately 8,991 rooms and operates in several of the largest cities including Mumbai, Delhi, Bengaluru, and Hyderabad.

The Complainant also has an established Internet presence and the domain name <accor.com> registered on February 23, 1998, resolves to its main website.

The Complainant submits that the disputed domain name <midaccor-mail.com> is confusingly similar to the Complainant’s ACCOR trademark as it reproduces the Complainant’s trademark ACCOR in its entirety in combination with the elements “mid” and “mail”. The Complainant argues that it is well established that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms do not prevent a finding of confusing similarity. As the dominant feature of the disputed domain name <midaccor-mail.com> contains the Complainant's mark ACCOR in its entirety, the adjunction of the terms “mid” and “mail” is insufficient to avoid confusing similarity between the disputed domain name and the Complainant’s service mark. In support of this argument the Complainant cites Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett)WIPO Case No. D2018-0586 and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Finally, the Complainant submits that the generic Top-Level Domain (“gTLD”) extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name as it is viewed as a standard registration requirement.

The Complainant submits that the Respondent has no has no rights or legitimate interests in respect to the disputed domain name under Paragraph 4(a)(ii) of the Policy, arguing that the Respondent is neither affiliated with the Complainant in any way, nor has it been authorised by the Complainant to use and register its ACCOR trademark, or to seek registration of any domain name incorporating said trademark; that the Respondent has no prior rights or legitimate interest in the disputed domain name; that the registration of the ACCOR trademark preceded the registration of the disputed domain name by a number of years; that the Respondent is not commonly known by the disputed domain name or the name “Accor” as the name of the Respondent’s company is “Cybernet Systech Private Limited”.

The Complainant submits that previous panels established under the Policy, have found that in the absence of any license or permission from a complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. In this regard the Complainant cites the decision of the panel in LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

Furthermore, the Complainant submits that the Respondent’s use of the disputed domain name to resolve to a parking page that displays commercial links – from which the Respondent or a third party is obtaining financial gain – cannot be a bona fide use of the disputed domain name, as by doing so the Respondent is taking unfair advantage of the Complainant’s rights.

Finally, a legitimate noncommercial or fair use of the disputed domain name by the Respondent cannot be inferred because the Respondent has demonstrated a clear intention to seek commercial gain. In response to the Complainant’s cease-and-desist letter the Respondent simply replied offering to sell the disputed domain name to the Complainant.

Arguing the disputed domain name was registered in bad faith, the Complainant asserts that it is implausible that the Respondent was unaware of the Complainant when the disputed domain name was registered because ACCOR was a well-known trademark throughout the world including India, the home country of Respondent on the date of registration of the disputed domain name; and that bad faith can be found where, as in the present case, a respondent “knew or should have known” of a complainant’s trademark rights but nevertheless proceeds to register a domain name in which it has no rights or legitimate interest. In this regard, the Complainant cites the decisions in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Complainant argues that the registration of the disputed domain name that is so obviously connected with a well-known trademark by someone with no connection to the trademark suggests opportunistic bad faith registration and it is inconceivable that the Respondent did not have the Complainant’s trademark and activities in mind at the time of registration of the disputed domain name.

The Complainant also argues the Respondent is using the disputed domain name <midaccor-mail.com> to direct Internet users to a parking page displaying commercial links from which the Respondent or a third party is obtaining financial gain and therefore is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

The fact that the sponsored links are “automatically” generated, as per the disclaimer appearing on the website, is irrelevant as prior panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name. Furthermore, neither the fact that such links were generated by a third party nor the fact that the Respondent itself may not have directly profited, would by itself prevent a finding of bad faith. See section 3.5 of the WIPO Overview 3.0.

Furthermore, when the Complainant first became aware of the registration of the disputed domain name it sent a cease-and-desist letter to the Respondent on April 11, 2018. The Respondent replied simply proposing to sell the disputed domain name to Complainant for a sum of USD 145. It added that the sum would be USD 165 if the transaction is done via escrow service and that all other escrow fees shall would be borne by the Complainant. The Complainant submits that this amounts to an offer to sell the disputed domain name for a sum in excess of the out-of-pocket expenses of the Respondent in registering the disputed domain name, which can be compelling evidence of bad faith registration and use. In this regard the Complainant cites the decisions in Imara Trade Marks BVI Limited v. Direct Privacy ID 1078D, Domain Name Proxy Service, Inc.,WIPO Case No. D2012-2183; Massachusetts Medical Society v. Michael Karle, WIPO Case No. D2000-0282; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001.

On August 10, 2018, the Complainant sent a notification to the registrar and the webhost to request the deactivation of the Respondent’s webpage sited at the disputed domain name address. In response, the webhost informed the Complainant that the disputed domain name “is used for monetizing traffic on domain names that do not have websites built out on them by showing targeted advertisements”. Also, the webhost indicated that they have blocked the disputed domain name on their system. Subsequently the Complainant noticed a change to the website to which the disputed domain name resolved and as of August 14, 2018, it was resolving to an error page. Thereafter, the parking page to which the disputed domain name <midaccor-mail.com> was previously directing, has been restored and the disputed domain name now resolves again to a parking page containing sponsored links. Finally, it seems that the Respondent has renewed the disputed domain name as the expiration date was initially January 23, 2019, and is now January 3, 2020.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(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

This Panel accepts that the Complainant has provided evidence of its rights in the ACCOR service mark acquired through its ownership of the above-mentioned registered trademarks and the substantial goodwill it has acquired through the extensive use of the mark internationally, including India where the Respondent purports to be established.

This Panel also accepts the Complainant’s submission that the disputed domain name <midaccor-mail.com> is confusingly similar to the Complainant’s ACCOR mark. The disputed domain name consists of the Complainant’s mark in its entirety in combination with the word “mid”, a hyphen, the word “mail” and the gTLD “.com” extension. The dominant distinctive element of the mark is the Complainant’s trademark. The words “mid” and “mail” and the hyphen do not prevent a finding of confusing similarity and the gTLD “.com” extension may be ignored for the purposes of comparison in the present case.

The Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, it has not been granted any right or license to use the disputed domain name, the Complainant’s name or mark or any domain name incorporating the Complainant’s name or mark. Furthermore, the Complainant is using the disputed domain name, which is confusingly similar to the Complainant’s ACCOR mark, for the purposes of attracting Internet traffic to its website in order to monetize hits.

In such circumstances, it is well established that the burden of production shifts to the Respondent to establish its rights or interests in the disputed domain name. The Respondent has not responded to the Complaint and has therefore failed to discharge the burden of production.

The Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

This Panel accepts the Complainant’s arguments that the disputed domain name was chosen and registered in order to target and take predatory advantage of the name, reputation, and goodwill of the Complainant. On the balance of probabilities, the Respondent was actually aware of the Complainant, its name, and ACCOR mark when the disputed domain name was registered. The Complainant is established in a number of cities across India, including Mumbai where the Respondent purports to be established.

Furthermore, on the balance of probabilities, the Respondent would have become actually aware of the Complainant’s domain name <accor.com> which was registered on February 23, 1998, and the Complainant’s website at “www.accorhotels.com” to which that domain name resolves, when the disputed domain name was subsequently registered on January 23, 2018.

On the evidence adduced, the Complainant has been using the disputed domain name <midaccor-mail.com> in bad faith to direct Internet users to a parking page displaying commercial links from which the Respondent or a third party is obtaining financial gain and therefore is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In making this finding, this Panel is fortified by the fact that since the Complainant sent a notification to the registrar and the webhost of the disputed domain name requesting deactivation of the Respondent’s webpage, the Respondent has changed or permitted the change of the address to which the disputed domain name resolves, initially to an error page and then back to a montised page.

This Panel also notes the Complainant’s evidence that the Respondent has offered to transfer the disputed domain name in return for payment of a sum in excess of the out-of-pocket expenses of the Respondent in registering the disputed domain name.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) 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 disputed domain name <midaccor-mail.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: April 12, 2019