The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Jan Everno, The Management Group II, of Grandville, Michigan, United States of America (“United States” or “US”).
The disputed domain names are registered as follows:
<ibis-senen.com> is registered with Domaincapitan.com LLC.;
<ibis-surabaya.com> is registered with eNomTen, Inc.;
<mercurekota.com> is registered with Domainraker.net LLC.;
<pullman-dubai-creekcitycentre.com> is registered with eNom439, Incorporated.
For ease of reference, the Registrars are hereinafter alluded to collectively as “the Registrar”, unless otherwise stated.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, and providing its contact details on file. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 17, 2017.
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 November 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2017. On December 19, 2017, the Complainant submitted a supplemental filing.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 21, 2017. 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.
As confirmed by the Registrar, the language of the disputed domain names’ registration agreement is English. Accordingly, pursuant to paragraph 11(a) of the Rules, the language of this administrative proceeding is English.
The Complainant, which was founded in 1967, operates mid-scale and upscale hotel chains in 95 countries under different brands, including IBIS, SOFITEL, FAIRMONT, PULLMAN, NOVOTEL, and MERCURE.
The Complainant owns, inter alia, the following trademark registrations:
International trademark registration No. 541432, registered on July 17, 1989, for IBIS, covering services in international classes 8, 16, and 42;
International trademark registration No. 615787, registered on December 20, 1993, for MERCURE, covering services in international classes 38, 39, and 42;
US trademark registration No. 4432744, registered on November 12, 2013, for PULLMAN, covering services in international class 43.
The above trademarks are in full force and effect.
The disputed domain names were registered on November 30, 2016 (<ibis-senen.com>), January 2, 2017 (<pullman-dubai-creekcitycentre.com>), June 17, 2017 (<mercurekota.com>), and June 27, 2017 (<ibis-surabaya.com>), as confirmed by the Registrar.
The disputed domain names resolve to landing pages featuring sponsored listings of hotel/travel-related links.
On December 20, 2016, February 1, 2017, and April 13, 2017, the Complainant served cease-and-desist letters on the Respondent, to no avail.
In summary, the Complainant contends as follows:
The disputed domain names reproduce the Complainant’s well-known marks IBIS, PULLMAN, and MERCURE in their entirety, which is sufficient to establish confusing similarity as per the Policy;
The terms “senen”, “surabaya”, “dubai”, “creek city centre”, and “kota” making up the disputed domain names, correspond to geographical locations of the Complainant’s hotels;
By registering the disputed domain names, the Respondent created a likelihood of confusion with the Complainant’s marks by misleading Internet users into thinking that the disputed domain names are somehow associated with the Complainant;
The Respondent is not affiliated with the Complainant in any way, and neither has it been authorized or licensed to use the Complainant’s marks IBIS, PULLMAN, and MERCURE as domain names;
Prior panels have found that, in the absence of any license or permission to use a complainant’s widely known marks, no legitimate or bona fide use of the disputed domain names arise;
The disputed domain names are so identical to the Complainant’s famous marks IBIS, PULLMAN, and MERCURE that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain names;
The disputed domain names direct Internet users to a parking page with pay-per-clicks which are likely to generate revenues;
The Respondent has been involved in several UDRP proceedings, where panels ruled against it for lack of rights or legitimate interests in the disputed domain names, thus reflecting a pattern of the Respondent’s cybersquatting;
At the time of registering the disputed domain names, it is implausible that the Respondent was unaware of the Complainant given the Complainant’s worldwide reputation, and therefore, the Respondent knew or should have known of the Complainant’s trademark rights in IBIS, PULLMAN, and MERCURE, and accordingly, the Respondent should have refrained from registering the disputed domain names;
Pursuant to paragraph 2 of the Policy, it was the Respondent’s duty to verify in advance that registration of the disputed domain names would not infringe the rights of third parties;
A quick trademark search would have revealed the existence of the Complainant’s IBIS, PULLMAN, and MERCURE marks;
The Respondent’s bad faith in this proceeding can be inferred from the rulings entered against the Respondent in prior UDRP proceedings;
The Respondent is taking unfair advantage of the Complainant’s marks by using the disputed domain names in connection with commercial links, some of them related to hotel services, including online booking services as well as hotel discounts;
Prior panels have held that directing users to a webpage displaying commercial links related to a complainant’s field of activities evidences bad faith.
The Respondent did not reply to the Complainant’s contentions.
For the avoidance of doubt, the Panel acknowledges that, it is perfectly admissible for one Complaint to relate to multiple domain names having been registered with multiple Registrars.
Paragraph 3(b)(vii) of the Rules requires the Complainant to “Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed”, and paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
Since the disputed domain names were all registered by the same Respondent, and are subject to the same Policy, the Panel affirms the admissibility of the Complaint, as filed.
After filing of the Complaint, and Response, if any, only supplemental submissions that are requested at the Panel’s sole discretion under paragraph 12 of the Rules, are admissible in UDRP proceedings.
In exercising its discretionary power to request further statements or documents from either of the parties, the Panel must keep in mind its duties under paragraph 10 of the Rules.
As stated in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged, and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
Against this backdrop, UDRP panels generally accept supplemental filings only when they provide materially new evidence or respond to arguments that could not reasonably have been anticipated. See Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.
Here, the Complainant’s Supplemental Filing alleges that, after filing the Complaint, the Respondent registered two new domain names reproducing the Complainant’s IBIS mark. The Complainant then relies on this allegedly new fact, to support its case against the Respondent, particularly with regard to bad faith.
The Panel is of the view that the relevance and materiality of the Complainant’s supplemental submission might be better assessed in a separate proceeding, if any, having the two domain names concerned as the disputed subject matter.
Accordingly, the Panel declines to admit the Complainant’s supplemental submission into the record of this case.
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
As explained in section 1.7 of the WIPO Overview 3.0, the test for confusing similarity under the UDRP involves a side-by-side comparison of the disputed domain names and the textual components of the relevant trademark(s).
The Panel notes, at first glance, that the disputed domain names replicate the Complainant’s marks IBIS, PULLMAN, and MERCURE in their entirety, which is normally sufficient to find confusing similarity for the purpose of establishing UDRP standing. 1
The incorporation of the geographic/descriptive terms “senen”, “surabaya”, “kota”, and “dubai-creekcitycentre” into the disputed domain names does nothing to prevent a finding of confusing similarity. See Accor and So Luxury HMC v. Whois Privacy Services Pty Ltd, Domain Hostmaster / Jason Bond, WIPO Case No. D2014-0558 (the inclusion of geographic terms is not sufficient to dispel confusing similarity).
Accordingly, the Panel holds that the disputed domain names are confusingly similar to the Complainant’s marks.
The Complainant has thus satisfied the first element of Policy under paragraph 4(a).
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant avers that it did not authorize the Respondent to use its IBIS, PULLMAN, and MERCURE marks within the disputed domain names. The Complainant also submits that the disputed domain names direct Internet users to a parking site with pay-per-clicks (PPC), which are likely to generate revenues for the Respondent.
In light of the above submissions, which are either deemed credible or supported by the record, the Panel finds that the Complainant has put forward a prima facie case on the second element.
Because the Respondent did not refute the allegations raised by the Complainant, the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See, Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name).
Moreover, the Panel has formed the view that the use of the disputed domain names in connection with websites featuring nothing but PPC links mostly related to hotels and travel services, trades off on the reputation and goodwill associated with the Complainant’s IBIS, PULLMAN, and MERCURE in the hospitality industry. As such, the Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. See, Tadım Gıda Maddeleri Sanayi ve A.Ş. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2017-0936 (finding that the respondent’s PPC links compete with or capitalize on the reputation of the complainant’s mark).
The Panel therefore finds that the Respondent has no rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy.
Consequently, the Complainant has satisfied the second element of the Policy.
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
To begin with, the Panel acknowledges that the Complainant’s IBIS mark is well known in numerous jurisdictions around the world, including the United States, where the Respondent has its address of record. See, Accor v. Leland M. Rutla, WIPO Case No. D2015-0912
The Panel also notes that the Complainant’s mark PULLMAN is in use in Europe, Asia, North America, South America, Oceania, and the Middle-East 2, while the Complainant’s mark MERCURE is used in connection with hotels located in Europe, Asia, South America, Central America, Africa, Oceania, and the Middle-East 3.
The Complainant’s reputation in the hospitality industry worldwide, the multicontinental reach of the IBIS, PULLMAN, and MERCURE marks, and the existing trademark registrations thereof, are sufficiently noteworthy to have put the Respondent on notice of the Complainant’s exclusive trademark rights at the time of registration of the disputed domain names. In other words, the Respondent should have known of the Complainant’s trademark rights in IBIS, PULLMAN, and MERCURE, by the time it registered the disputed domain names, which in turn misappropriate said marks.
Furthermore, the fact that the disputed domain names resolve to websites displaying PPC links mainly related to hotels, reveal the Respondent’s primary motive in relation to the registration and use of the disputed domain names, which in the Panel’s mind is to profit from the Complainant’s goodwill in the IBIS, PULLMAN, and MERCURE marks. See, Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1322 (by diverting Internet users to the website associated with the disputed domain name, the respondent is benefiting from pay-per-click revenue and profits, which is evidence of use of the disputed domain name in bad faith).
For the reasons discussed under this and the preceding headings, the Panel holds that the Respondent’s conduct constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy.
Lastly, the Panel accepts the Complainant’s submission, and the decisions cited in the Complaint, to the effect that the Respondent is a repeat cybersquatter, which ratifies its bad faith here. See, Groupon, Inc. v. Jan Everno, The Management Group II, WIPO Case No. D2016-0307; Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586.
The above circumstances, taken together, persuade the Panel that the disputed domain names were registered and have been used in bad faith within the realm of the Policy.
Consequently, the Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy.
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 names <ibis-senen.com>, <ibis-surabaya.com>, <mercurekota.com>, and <pullman-dubai-creekcitycentre.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: January 8, 2018
1 Ibidem
2 See, “www.pullmanhotels.com”
3 See, “www.mercure.com”