Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
Respondent is Mark Mandall, Hardcoresales Pty Ltd, of Brisbane, Queensland, Australia.
The disputed domain name <grandmercuredocklands.com.au> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 15, 2019, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 15, 2019, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 19, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 9, 2019.
The Center appointed Leon Trakman as the sole panelist in this matter on April 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.
Complainant enjoys a worldwide reputation. Complainant owns GRAND MERCURE and MERCURE trademark registrations around the world, including: Australian Trademark MERCURE No. 612263, dated September 23, 1993, duly renewed, covering services in class 42; International trademark GRAND MERCURE No. 900839, dated of September 29, 2006 (since renewed) covering services in class 43 covering, inter alia, Australia, Japan, Kazakhstan, Norway, and Turkey.
Complainant also operates domain names including: <grandmercure.com> registered on October 25, 2004; and, <mercure.com> registered on April 6, 1996.
On the evidence presented, Respondent does not own, or have a legal right or interest in, trademarks or domain names using the words “grand mercure”, or the word “mercure”, other than as may be inferred from its registration and use of the disputed domain name. The disputed domain name was registered on February 2, 2018, and resolved to a website with the title “Docklands Apartment Grand Mercure”, offering apartment services and tips.
Complainant contends, firstly, that the disputed domain name <grandmercuredocklands.com.au> is very similar to Complainant’s trademarks MERCURE and GRAND MERCURE and that it reproduces Complainant’s trademark in its entirety.
Secondly, Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name, and that its registration and use of that name violates Complainant’s GRAND MERCURE and MERCURE trademark, which precedes by some years Respondent’s registration and use of the disputed domain name.
Thirdly, Complainant contends that it is implausible to hold that Respondent was unaware of Complainant’s trademark and services when it registered the disputed domain name. Complainant asserts that Respondent demonstrated bad faith in that it “knew or should have known” of Complainant’s trademark rights and, nevertheless registered and used the disputed domain name in bad faith in which it had no right or legitimate interest.
Respondent did not respond to the Complaint.
The Panel finds that the disputed domain name <grandmercuredocklands.com.au> is confusingly similar, and indeed, identical in significant respects to Complainant’s trademarks MERCURE and GRAND MERCURE.
Prior UDRP Panels have held that a Respondent who incorporates a Complainant’s widely known trademark in its entirety is adequate to establish that Respondent has adopted a domain name that is identical or confusingly similar to a Complainant’s registered trademark. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the Panel has referred to prior UDRP cases where appropriate. See Accor v. Domainjet, Inc., WIPO Case No. D2012-0038; Accor v. Huajicani Hujiancai, WIPO Case No. D2014-0189; Accor v. Reap Usd, WIPO Case No. D2016-0177; L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059;and, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.
The fact that the disputed domain name is almost identical to Complainant’s trademark, but includes a geographical term beyond that trademark, is insufficient to hold that the disputed domain name is not confusingly similar to the Complainant’s trademark. On authority for this determination, see, L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1640; L’Oréal v. Liao Quanyong, WIPO Case No. D2007-1552; Accor v. Serdar Ceylan, WIPO Case No.D2011-2231;and, LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505.
The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the names “Grand Mercure” and/or “Mercure”. Nor is Respondent employed by, an agent of, or otherwise affiliated with the Complainant. Complainant has not authorized Respondent to register or use its trademarks. Nor does Respondent have legitimate rights or legitimate interests in the noncommercial or fair use of the disputed domain name, as is required by paragraph 4(c)(iii) of the Policy.
Nor can Respondent reasonably assert that it made, or is currently making, a legitimate noncommercial or fair use of the disputed domain name. A Respondent who misleads consumers by diverting them to an alternative website for profit, or who seeks to tarnish the trademark or service mark of a Complainant, violates paragraph 4(c)(iii) of the Policy. It is reasonable to conclude that Respondent in the instant case is using the disputed domain name for profit, by redirecting consumers to a page entitled “Docklands Apartment Grand Mercure” which offers apartment service information and tips.
It is also reasonable to consider that email servers have been configured on the disputed domain name in a manner that enables Respondents to engage in a phishing scheme, and not in a legitimate business or service.
These conclusions apply to Respondent in this case, notably intending to profit from the registration and use of the disputed domain name. Correspondence between Complainant and Respondent prior to these administrative proceedings, leads to the reasonable determination that Respondent registered the disputed domain name for the purpose of selling it to Complainant for profit over and above Respondent’s costs in purchasing it. Whether respondent’s intended to sell the disputed domain name in bad faith is evaluated in Section C below.
The Panel determines that Respondent registered and used the disputed domain name in bad faith.
In registering the disputed domain name that is confusingly similar to Complainant’s trademark, Respondent most likely had knowledge of Complainant’s trademark and widely known business operations and services. Such bad faith registration is reasonably imputed to Respondent on grounds that he “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which Respondent had no rights or legitimate interests and in bad faith. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
It is equally evident that Respondent also used the disputed domain name in bad faith. The fact that Respondent, shortly after registration, sought to sell it to Complainant at a profit over Respondent’s registration costs, following Complainant’s cease-and-desist letter, is evidence, albeit not conclusive, of Respondent’s bad faith use of that name. There is ample authority that an offer to sell a domain name in excess of the out-of-pocket expenses incurred by Respondent in registering it, can constitute compelling evidence of bad faith registration and use (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).
It is nevertheless conceivable that Respondent sought to sell the disputed domain name in response to Complainant’s cease-and-desist letter, without intending at the time of registration of the disputed domain name to profit from its sale. However, given that Respondent must reasonably have known of Complainant’s trademark before registering the disputed domain name, it is most likely that Respondent did so knowingly and in bad faith, including in being willing to sell it to Complainant for profit.
It is also reasonable to infer, albeit not irrefutably, that Respondent would have been willing to sell the disputed domain name for profit to a competitor of Complainant, or to a third party who might use that name for commercial purposes that infringe Complainant’s trademark, including to resell it to Complainant, as Respondent had purported to do. The fact that Respondent chose to adopt one of the alternative infringements noted above does not render that infringement any less violative of Complainant’s trademark. The prospective harm of such registration and use is to undermine Complainant’s business relations with actual and prospective customers, its reputation in local and internationally markets, and its reasonably efforts to further develop its business operations.
This determination of this Panel extends beyond the idea of opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). It is reasonable for this Panel to determine that Respondent engaged in bad faith registration and use, beyond Complainant’s assertion that it engaged in opportunistic behavior. The Panel has responded to this assertion by determining that Respondent acted, not only opportunistically, but also in bad faith.
It is necessary for Complainant to succeed in the case to establish the “confusing similarity” between Complainant’s trademark and the disputed domain name; that Respondent did not have any right or interest in the disputed domain name entitling Respondent to do; and, that Respondent registered and used the disputed domain name in bad faith. Should any one of these requirements be absent, no finding against Respondent is reasonable.
In the present case, the Panel finds that Respondent has engaged in registration and use in bad faith and that Complainant has satisfied the three elements require by paragraph 4.a of the Policy.
For all 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 <grandmercuredocklands.com.au> be transferred to Complainant.
Date: April 18, 2019
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