WIPO Arbitration and Mediation Center

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Domain Administrator, See PrivacyGuardian.org / Devid Jesper

Case No. D2019-1395

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Devid Jesper, France, self-represented.

2. The Domain Name and Registrar

The disputed domain name <accorhotels-asia.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 18, 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 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 June 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received two informal email communications from the Respondent on June 28 and 29, 2019. The Complainant filed an amended Complaint on July 2, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Center received an informal email communication on July 8, 2019. On July 25, 2019, the Respondent requested the automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was August 1, 2019. On July 28, 2019, the Respondent requested a further extension of the Response due date. The Response was filed with the Center on August 1, 2019.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 16, 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 the French entity Accor, a major actor in the field of hotel services worldwide. It operates over 4,500 hotels in more than 100 countries under several brands such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure, and Ibis. The Complainant offers its services in Asia as well, including China, where it operates around 300 hotels under some of the brands mentioned above.

The Complainant owns numerous trademark rights over ACCORHOTELS and ACCOR, including the following:

- European Union Trademark ACCORHOTELS No 010248466, filed on September 8, 2011;

- International Trademark ACCOR No. 742032, registered on August 25, 2000, with effect in several countries such as China, Germany, or Italy.

It also owns and operates a number of domain names to offer its services, such as <accor.com> registered on February 23, 1998, and <accorhotels.com> registered on April 30, 1998.

The Respondent is M. Devid Jesper, an individual with an address in Paris, France. He defines himself as an “SEO professional”. SEO stands for “search engine optimization”, an activity which consists in optimizing websites to rank them on targeted keywords on the search engine Google.

The disputed domain name <accorhotels-asia.com> was registered on September 9, 2017, through the services of a privacy shield, “Whois Privacy Shield Services”.

Initially, on October 5, 2017, the disputed domain name was redirecting users to a webpage of the marketplace “www.pheenix.com”, with the indication that “Auction is not available”.

On October 10, 2017, the Complainant’s legal representative sent a cease-and-desist letter to the Respondent, requesting in particular the transfer of the disputed domain name free of charges.

On the same day, the Respondent replied to the Complainant, indicating that he acted as an SEO professional, had registered the disputed domain name legitimately, and would use it in the future legally, without harming the rights of the Complainant and specifically not in the field of hotel services. He also indicated that he was prepared to negotiate a monetary transfer of the disputed domain name.

On December 27, 2017, the Complainant’s legal representative sent a reply to the Respondent, in which it insisted in obtaining the transfer of the domain name free of charges. It indicated in particular that the use of the disputed domain name, even beyond the field of hotel services, was very likely to harm the rights and interests of the Complainant. It also added that it would not pay for a domain name which value was solely attributable to the value of its own trademarks.

Subsequently to these initial exchanges, several changes occurred concerning the disputed domain name, including a change of registrar from Pheenix 42, LLC, to NameSilo, LLC, as well as the use of a new privacy shield, which changed from “Whois Privacy Shield Services” to “See PrivacyGuardian.org”.

Also, the Respondent started using the disputed domain name, by hosting a webpage entitled “Notre hôtel est le meilleur d’Asie” (“Our hotel is the best in Asia”), and containing some tips on how to use a toolbox, under the title “Les connaissances élémentaires pour bien choisir sa valise d’outillage” (“basic knowledge as to how to choose properly a toolbox”).

The Complainant also noticed that an email server was configured on the disputed domain name <accorhotels-asia.com>.

Based on these new elements, another cease-and-desist letter was sent to the Respondent who, according to the Registrar, simply replied on November 15, 2018 by stating that he would not do anything “without a court order”.

Finally, the Panel notes that the Respondent modified the webpage hosted at the disputed domain name, after the complaint was filed. The new heading of the webpage does not refer any longer to hotels in Asia, but states that “L’Asie est un continent possédant de nombreuses merveilles du monde” (“Asia is a continent that possesses numerous wonders of the world”). Otherwise, the information regarding the choice of toolboxes is still displayed.

5. Parties’ Contentions

A. Complainant

In essence, the Complainant argues as follows:

On the first element of the Policy, it states that the disputed domain name <accorhotels-asia.com> reproduces its trademarks ACCOR and ACCORHOTELS, which have regularly been considered well known by previous panels. It adds that the insertion of the word “asia” does not prevent a finding of confusing similarity, as it is simply a geographical term. On the contrary, it “enhances the false impression that the domain name <accorhotels-asia.com> is controlled by, or affiliated to, the Complainant. Indeed, the disputed domain name is likely to confuse Internet users particularly the Complainant’s customers into believing that the disputed domain name will direct them to a website related to the Complainant’s hotels located in Asia”.

On the second element of the Policy, the Complainant indicates that the Respondent “is neither affiliated with Complainant in any way nor has he been authorised by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said marks. Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The registration of the ACCOR and ACCORHOTELS trademarks preceded the registration of the disputed domain name for years”.

The Complainant underlines in particular that the title of the webpage hosted under the disputed domain name, “Notre hôtel est le meilleur d’Asie” (“Our hotel is the best in Asia”) reveals that “Respondent is taking unfair advantage of Complainant’s rights. Indeed, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s marks by misleadingly diverting Internet users to its own website”.

On the third element of the Policy, the Complainant distinguishes in its developments between the registration and the use of the disputed domain name <accorhotels-asia.com> in bad faith.

Regarding the registration of the disputed domain name in bad faith, it claims that “[i]t is implausible that Respondent was unaware of Complainant when he registered the disputed domain name”, because of its worldwide fame and presence. The Respondent could, and should, have made sure that the disputed domain name did not infringe the rights of any third party and, in this respect, a quick search would have revealed the existence of the Complainant and its trademarks.

Regarding the use of the disputed domain name in bad faith, it claims that, as a result of the use of the webpage with an express reference to the best hotel in Asia, the Respondent is “using the disputed domain name to intentionally attract 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 services offered on Respondent’s website. Hence, Respondent’s use of the disputed domain name with the purpose of capitalizing on the notoriety of the Complainant’s trademarks cannot constitute good faith”. It considers, also, that the configuration of an email server on the disputed domain name leads to a presumption of bad faith use, because of the risk of engagement in a phishing scheme. In any event and beyond these factual elements, the Complainant considers that, owing to the Complainant’s goodwill and the nature of the disputed domain name, which associates its trademark to a geographical name, no possible use in good faith is conceivable.

B. Respondent

The Respondent is probably a French national and he has used French in several exchanges with the Complainant. These messages are part of the file and they will be relied upon insofar necessary to take into account his arguments in response to the Complaint. Besides, the Respondent has filed a proper Response to the Complaint in English, while apologizing for the poor quality of his writing in this language. Much to the contrary, the Panel finds that the Respondent could express himself very well in his response, with good skills in English, even when referring to technical aspects of his business. Clearly then, the Respondent was able to defend his case properly.

In an email sent to the Complainant on July 8, 2019, the Respondent indicates that he never suggested a specific price to transfer the disputed domain name. Therefore, he claims that the Complainant incorrectly states that the cost proposed was too high. In the same message, he also suggests that a third party might have usurped his identity for some time, due to a provisional technical malfunction, and claimed bitcoins in exchange of the disputed domain name. Finally, he insists in the fact that he remains available to reach a commercial solution to this dispute.

The Respondent indicates that he registered the disputed domain name <accorhotels-asia.com> using a backorder service, which allows the registration of pre-existing domain names once they are not renewed and are again made available. He alleges that he did so as part of his activities in the field of search engine optimization (SEO). Indeed, he claims that pre-existing domain names have a better value because the algorithm used by Google promotes domain names that have existed for a long time, among other criteria (this added value is known as “SEO metrics”). As part of his activities, he handles a portfolio of at least 280 domain names.

The Respondent claims that the disputed domain name is not similar to the earlier trademarks of the Complainant, and in particular to the trademark ACCOR HOTELS. Indeed, it would appear that the Complainant has abandoned early in 2019 the brand ACCOR HOTELS, and is now solely using the name ACCOR. Besides, a domain name has no meaning per se, and its similarity with a prior trademark can solely be assessed on the basis of the activities conducted. And, in any event, the disputed domain name could be used for third party reviews of the hotels of the Complainant in the Asian region.

He insists on the fact that he registered the disputed domain name legitimately: the previous registrant decided for some reason not to renew the disputed domain name and the Respondent took advantage of this opportunity. He did so, allegedly, with the assistance of a software that allows him to select potentially relevant domain names, i.e. domain names which are likely to have a better potential for SEO activities among thousands of domain names which are not renewed and are released every day for new registration. He then indicates that “[o]n the 12th of September 2017, the domain name <accorhotels-asia.com> caught the Respondent’s attention because of the associated SEO metrics”, and adds that “[t]he fact that the domain name was made available for registration was telling the Respondent that he had all the right to register it for his personal use whatever the domain name wording could be”.

The Respondent then goes on by denying the allegations of the Complainant on the claim of affiliation between the disputed domain name and its actual use. He indicates in particular that the webpage displayed under the disputed domain name provides information about toolboxes, and has therefore nothing to do with the activities of the Complainant. And, while it is true that the webpage contained a title referring to the word “hotel”, it was since then removed as a proof of good faith. He adds that “the domain name <accorhotels-asia.com> also contains the geographical term “Asia” which refers to the countries of the Asian continent, there are no countries in Asia that have French as an official spoken language. Therefore, it implies that potential visitors are exclusively from Asia, no visitors would have interests on the website since no visitors from Asia can speak and read French language”. As such, the Respondent claims that he has made a bona fide use of the disputed domain name.

The Respondent also denies the allegation of phishing, by stating that “having a mere MX record does not prove if a mail account is setup and being in use. The website is currently being managed by the […] management software. Default DNS records are pre-configured by the administrator of the management software. The administrator is the hosting provider”.

On the issue of bad faith, the Respondent denies in particular having had prior knowledge of the existence of the trademark ACCOR. He knew of some of the hotels administered by the Complainant, such as IBIS, MERCURE or NOVOTEL, but had never heard of the Complainant itself. And indeed, he ignored that under the Policy he was supposed to verify prior to its registration whether the disputed domain name could infringe the intellectual property rights of third parties. Anyway, he insists on the fact that, in his activity as SEO professional, he does not choose domain names on the basis of their wording, but on the basis of their SEO metrics.

He also indicates that “[t]here is simply no intention from the Respondent to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark because there are no use of terms related to the Complainant’s mark or with the hotel niche, moreover the geographical term “asia” contained inside the domain name implies that the domain name is directed towards visitors from the Asia continent, and since there are no French speakers in the Asia continent, they wouldn’t be able to understand the content of the website, they would have no interest in reading something they don’t understand, they would leave the website right away”.

Finally, the Panel is asked to make a finding of reverse domain name hijacking. In support of this claim, the Respondent highlights the alleged arrogance and intimidation of the Complainant, the lack of initiative by the Complainant against the previous owner of the disputed domain name, and the lack of real factual basis for the claims of lack of legitimate interest and of bad faith made in the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.

The disputed domain name contains the trademarks ACCOR and ACCOR HOTELS in their entirety and simply adds the word “asia”. Both elements are separated with a hyphen. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8. In this case, the addition of the geographical term “asia” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks, which are clearly recognizable in the disputed domain name.

The arguments of the Respondent regarding the alleged recent abandonment of the trademark ACCOR HOTELS by the Complainant are not relevant. First, the trademarks rights of the Complainant over ACCOR HOTELS are well in force and enforceable. Second, the other trademark of the Complainant, ACCOR, is reproduced and directly recognizable in the disputed domain name. The addition of the geographical and descriptive words “hotels” and “asia” does not prevent a finding of confusing similarity.

The disputed domain name <accorhotels-asia.com> is therefore confusingly similar to the trademarks of the Complainant, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The issue of the existence of rights or legitimate interests of the Respondent is heavily disputed by the parties.

As summarized above, the Respondent basically claims that he has a legitimate interest in registering a domain name which was previously registered and then abandoned by a third party, as part of a backorder service. He claims that the disputed domain name was chosen not on account of its words, but on account of its SEO metrics, with the assistance of a dedicated software that filters the thousands of domain names released every day.

The Panel has no doubt that the Respondent is engaged in an activity of search-engine optimization and has, for this purpose, registered a number of domain names carefully selected on account of their potential, of their objective value. This activity, as such, is perfectly legitimate.

This does not mean, however, that the Respondent has a legitimate interest in registering any domain name, whatever its composition. As correctly indicated by the Complainant in its exchanges with the Respondent, whatever value, and therefore whatever interest, in the disputed domain name <accorhotels-asia.com> is exclusively and solely attributable to the reproduction of the famous trademarks of the Complainant. Even if the disputed domain name was initially chosen on the basis of objective technical criteria, the fact remains that it is built on the Complainant’s trademark. It is not composed of generic, descriptive or meaningless words. Therefore, even if the Respondent has registered many domain names for a perfectly legitimate purpose, he cannot claim having any rights or legitimate interests on this specific disputed domain name, because it is essentially built from the Complainant’s trademarks, and because any value it may have is because if the incorporation of the Complainant’s trademarks.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.

A careful review of the case file and of the parties’ arguments supports a finding of bad faith registration of the disputed domain name <accorhotels-asia.com>. In particular, there are a couple of factual elements that are decisive for the Panel:

First, even if the Respondent, as an SEO professional, filters the newly released domain names with computerized assistance, on the basis of objective criteria, the final decision of registering the disputed domain name is made by himself. He could review the disputed domain name personally, and select it among a number of alternative choices. The Respondent does not own thousands of domain names registered randomly or automatically: he has a portfolio of less than 300 domain names, which undoubtedly were chosen with care with a mix of objective and subjective criteria.

Second, the fact that the Respondent has allegedly not traveled much has no impact on the fact that he knew, or should have known, of the Complainant’s existence and business. The Respondent is an SEO professional who selects his domain names with care, and the Panel has no doubt that the Respondent did at least check why the SEO metrics of this domain name where good. A few clicks and a few seconds were sufficient to perceive the existence and the relevance of the trademarks of the Complainant. This is all the more true in the hotel business, where actors need to have a very strong presence online to offer their services.

Finally, the fact that the same domain name existed previously has no bearing on this assessment.

With respect to the use of the disputed domain name <accorhotels-asia.com> in bad faith, the Panel is prepared to give credit to some of the arguments put forward by the Respondent. The Respondent correctly indicates that while he offered the disputed domain name for sale, he did not suggest any price, unlike stated by the Complainant. And indeed, offering a domain name for sale can be part of the bona fide business of a person that consolidates a portfolio of domain names, including as a proposal to avoid a dispute. Likewise, the Panel notes that the claim of potential phishing scheme is not substantiated and is sufficiently rebutted by the Respondent. In any event, the Complainant did not make any misleading assertion; it simply suggested the possible existence of a phishing scheme without providing relevant evidence of an actual use as a phishing scheme.

However, the Panel is concerned about other elements for which the Respondent did not provide convincing explanations:

First, the webpage hosted under the disputed domain name contained a title which expressly made reference to the hotel business, in Asia. The reference to “our hotel” is clearly a claim likely to confuse the public, who will inevitably believe that this disputed domain name is connected with the Complainant. By using this title, the Respondent has unduly impersonated the Complainant. Also, claiming that French is not understood in Asia makes no sense: any consumer, anywhere, is likely to access the disputed domain name, and would believe that it simply promotes the hotels operated by the Complainant in Asia.

Second, the Panel struggles to understand the relevance of the content of the webpage of the Respondent in support of its SEO business. The purpose of search-engine-optimization is to obtain naturally a better positioning in the results of a search engine. Achieving a good result solely makes sense if, thereafter, users click on the link and access the content of a website, with thereafter a potential commercial benefit. In this case, though, the webpage of the Respondent neither contains anything relevant (the explanations on toolboxes are clearly a fake fill-in), nor offers links to other commercial websites. Therefore, and failing convincing explanations by the Respondent, the Panel believes that the disputed domain name was not used in good faith within his SEO activities.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied, and therefore the Panel concludes that there are no grounds for the claim of reverse domain name hijacking.

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 <accorhotels-asia.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: August 30, 2019