WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. David Larson

Case No. D2020-1680

1. The Parties

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

The Respondent is David Larson, United States of America (“United States” or “U.S”)

2. The Domain Name and Registrar

The disputed domain name <accor-com.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 June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2020, 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on August 6, 2020. 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 global hotel operator that owns, manages and franchises hotels, resorts, and vacation properties. The Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services and has provided customers with expertise acquired in this core business for more than 45 years.

The Complainant was founded in 1967 and has since acquired considerable reputation and goodwill worldwide. The Complainant operates more than 4,500 hotels in 111 countries worldwide and around 700,000 rooms, from economy to upscale.

The Complainant is the exclusive owner of registered trademarks consisting of the word “accor” in various jurisdictions throughout the world, including the following:

- the International trademark No. 742032 ACCOR (word mark), registered as of August 25, 2000;

- the US trademark No. 2838984 ACCOR (word mark), registered as of May 4, 2004.

The Complainant also owns a domain name portfolio that includes the trademark ACCOR, such as the domain name <accor.com> registered since February 23, 1998.

The disputed domain name was registered on October 31, 2019 and it currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it owns and operates several hotels under the trademark ACCOR, which is a well-known trademark, protected worldwide in particular in relation to hotels and restaurants services. The Complainant further argues that the disputed domain name is virtually identical or, at least, confusingly similar to the Complainant’s trademark ACCOR, as it reproduces the Complainant’s trademark ACCOR in its entirety, which previous panels have considered to be “well-known” or “famous”. The addition to the ACCOR trademark of the generic term “com” and a hyphen in the disputed domain name does not prevent the likelihood of confusion.

With regard to the second element, the Complainant argues that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the Complainant’s ACCOR trademark preceded the registration of the disputed domain name for years. The Complainant argues that the Respondent is not commonly known under the disputed domain name or under the name “ACCOR”. The Complainant indicates that after the disputed domain name was registered it pointed towards a parking page displaying sponsored links in the Complainant’s field of activity, and it currently resolves to an inactive page. The Complainant argues that this change does not affect the situation nor change the fact that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. The Respondent never answered to the Complainant’s cease and desist letter despite several reminders.

In what concerns the third element, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name as ACCOR is a well-known trademark throughout the world including the United States where the Respondent is located. In addition, the Complainant’s trademark rights predate the registration date of the disputed domain name and taking into account the worldwide reputation of the Complainant and its trademarks it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name. As regards the use of the disputed domain name, the Complainant argues that the disputed domain name initially resolved to the default page of the registrar containing commercial links related to hotels, targeting directly Complainant’s field of activity. The Complainant argues that the Respondent was thus aware that ACCOR enjoyed a substantial reputation worldwide. The fact that the disputed domain name resolves to an inactive page at the date of the Complaint does not change the conclusion that the disputed domain name was used in bad faith, as passive holding does not preclude a finding of bad faith. The disputed domain name is set-up with active email servers, therefore the Respondent might be engaged in fraudulent actions as the use of email addresses with the domain name presents a significant phishing risk.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the ACCOR trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “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”.

Here the disputed domain name wholly incorporates the Complainant’s ACCOR trademark. The fact that a disputed domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. The Panel finds that the trademark of the Complainant is included in its entirety in the disputed domain name and the addition of a hyphen and of the term “com” in the second level domain, that merely duplicates the Top-Level Domain, does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. For a similar finding see Agfa-Gevaert N.V. v. Bruce C. Whitehurst, Xray Eye & Vision Clinics, WIPO Case No. D2020-1105.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark ACCOR and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name. The Complainant also contends that no license or authorization was ever given for the use of the trademark ACCOR in the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimated interests in the disputed domain name.

According to the unrebutted evidence put forward by the Complainant, the disputed domain name redirected Internet traffic to a sponsored listings website in the Complainant’s field of activity. This does not represent bona fide offering of goods or services that would demonstrate rights or legitimate interests in the disputed domain name as required by the Policy (section 2.9 of the WIPO Overview 3.0).

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

According to the unrebutted assertions of the Complainant, its ACCOR trademark is widely used in commerce well before the registration of the disputed domain name in November 2019. The disputed domain name is confusingly similar to the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name.

As the website at which the disputed domain name redirected featured sponsored links in the Complainant’s field of activity and given the confusing similarity between the ACCOR trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolved. Presumably, the Respondent intended to benefit from the confusion created. It is likely that the Respondent earns income when Internet users click on the links in search of the Complainant’s services. This amounts to use in bad faith.

The fact that the website at which the disputed domain name currently resolves is inactive does not change the above conclusion. Passive holding of the disputed domain does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g.,Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938).

Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name:

- the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, WIPO Case No. D2013-2100.

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy.

- the well-known character of the ACCOR trademark – as held for example in Accor v. Valery Yimga, Avy Media Limited, WIPO Case No. D2018-1733. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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, <accor-com.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: August 20, 2020