The Complainant is Accor and SOLUXURY HMC, of France, represented Dreyfus & associés, France.
The Respondent is Mohammad Reza Aghaei, of Iran (Islamic Republic of) (“Iran”).
The disputed domain names <mercureiran.ir>, <novoteliran.ir> and <sofiteliran.ir> are registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 20, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name). On August 22, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2020. On September 21, 2020, the Center notified the Respondent’s default.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 24, 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.
The Complainants are companies organized under the laws of France that belong to a leading hotel chain, founded in 1967 and operating more than 4,500 hotels in 11 countries (including Iran and other Middle Eastern countries like Bahrain, Qatar, Saudi Arabia and United Arab Emirates), under numerous brands including MERCURE, NOVOTEL and SOFITEL. In Tehran, Iran, the Complainants operate two hotels, one under the brand NOVOTEL and another under the brand IBIS.
The Complainants hold a large portfolio of registered trademark rights in the marks MERCURE, NOVOTEL and SOFITEL in many jurisdictions, including:
International Registration No. 615787 MERCURE, word, registered on December 20, 1993, in classes 8, 16 and 42, designating inter alia China, Mongolia, Republic of Korea and Turkey;
United Arab Emirates Trademark Registration No. 196346 MERCURE, figurative, registered on May 10, 2015, in class 43;
International Registration No. 863332 SOFITEL, word, registered on August 26, 2005, in classes 35, 39 and 43, designating inter alia Algeria, China, Iran, Kazakhstan, Sudan and Viet Nam;
International Registration No. 1407393 NOVOTEL, word, registered on January 9, 2018, in class 36, designating inter alia, Egypt, Indonesia, Philippines, Turkey and Viet Nam;
United Arab Emirates Trademark Registration No. 226220 NOVOTEL, figurative, registered on October 21, 2015, in class 43 (collectively the “MERCURE mark”, the “NOVOTEL mark” and the “SOFITEL mark).
The Complainants own and operate various websites reflecting their trademarks, containing information and promoting their accommodation services, under various domain names, including <mercure.com> (registered on April 16, 1996), <sofitel.com> (registered on April 11, 1997) and <novotel.com> (registered on April 10, 1997).
The disputed domain names were registered on October 5, 2016, and resolve to the same website displaying the picture of a person wearing a black turban, who appears to be the current President of Iran, with a legend in Arabic language.
Key contentions of the Complaint may be summarized as follows:
The marks MERCURE, NOVOTEL and SOFITEL are well-known trademarks, as it has been recognized by prior decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 .
The disputed domain names reproduce the Complainants’ trademarks MERCURE, NOVOTEL and SOFITEL in their entirety, combined with the geographical term “Iran”, which enhances the false impression that the disputed domain names are officially related to or associated with the Complainants or their services offered in Iran. The country code Top-Level Domain (“ccTLD”) “.ir” should be disregarded for the purposes of assessing confusing similarity.
The Respondent lacks any rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names or the marks MERCURE, NOVOTEL or SOFITEL, the Complainant has no relationship with the Respondent, not having authorized the registration of the disputed domain names, and the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names resolve to websites with political content displaying the picture of the current President of the Islamic Republic of Iran, which may compromise the Complainants’ political neutrality and worldwide renown, as the Complainants are not supposed to promote any political party, in any matter. Further, email servers have been configured on the disputed domain names, generating a high risk that Respondent is engaged in a phishing scheme.
The disputed domain names were registered and are being used in bad faith. Due to the well-known character of the Complainants’ trademarks worldwide, including Iran and neighboring countries (where the Complainants operate MERCURE, NOVOTEL and SOFITEL hotels), and the nature of the disputed domain names that reproduce the Complainants’ marks in their entirety, the Respondent knew or should have known of these marks being implausible he acted in good faith. Any trademark or Internet search would reveal the existence of the Complainants’ trademarks. Further, the Respondent has been previously subject of other proceedings under the Policy related to various domain names targeting the Complainant’s trademarks (ACCOR v. Mohammad Reza Aghaei, WIPO Case No. DIR2018-0010, and ACCOR v. Mohammad Reza Aghaei, WIPO Case No. DIR2018-0011), showing a pattern of bad faith, and the use of disputed domain names in connection with a website of political content evidences an intent to misleadingly divert consumers by taking unfair advantage of the goodwill and reputation of the Complainants’ trademarks. This use it is further detrimental to the Complainants’ trademarks renown, as it may confuse Internet users into believing that the Complainants are involved or engaged in political campaigns or parties. Furthermore, as email servers have been configured on the disputed domain names, there is a risk that Respondent is engaged in a phishing scheme, using the disputed domain names to steel sensible information from the Complainants’ clients or employees.
The Complainants have cited previous decisions under the UDRP considered supportive of their position, and request the transfer of the disputed domain names.
The Respondent did not reply to the Complainants’ contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. Noting the substantive similarities between the Policy and the UDRP, the Panel will refer to prior UDRP cases and doctrine, where appropriate.
The Complainants indisputably have rights in the registered MERCURE, NOVOTEL and SOFITEL marks. The disputed domain names incorporate, respectively, these marks in their entirety, followed by the geographical term “Iran”, which does not avoid a finding of confusing similarity with these trademarks. The Complainants’ MERCURE, NOVOTEL and SOFITEL marks are clearly recognizable in the disputed domain names, and the ccTLD “.ir” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainants’ marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain names, once the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainants’ assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainants’ prima facie case. However, the Respondent has not replied to the Complainants’ contentions.
The evidence in the file shows the disputed domain names are linked to a website completely unrelated to the Complainants’ marks, of probable political content, displaying the photograph of a person wearing a black turban, who appears to be the current President of the Islamic Republic of Iran. In Iran and other Middle Eastern countries, black turbans have a religious and political connotation of authority, being often worn by rulers or political/religious authorities (the Panel, in use of is general powers articulated in the Policy, has conducted various searches over the Internet and consulted an Iranian encyclopedia). The website linked to the disputed domain names further includes a legend in Arabic language at the right side of the image of this leader, which does not mention the Complainants or any of their trademarks, and this website includes no further content or information. It does not seem to contain any reference to the website provider and/or the owner of the disputed domain names and/or its lack of relationship with the Complainants and their notorious trademarks MERCURE, NOVOTEL and SOFITEL. Prior decisions under the UDRP have considered the well-known character of the brands MERCURE, NOVOTEL and SOFITEL. See Accor, SoLuxury HMC v. Nguyen Xuan Thanh, WIPO Case No. D2015-0841; Accor v. Shinwute K., WIPO Case No. D2013-1729; Accor v. Whois Agent, Whois Privacy Protection Service, Inc., ICS Inc., WIPO Case No. D2015-2291; and Accor and SoLuxury HMC v. Charles Wang / Xiamen eNameNetwork Co., Ltd, WIPO Case No. D2015-0470.
The Panel considers that such unauthorized use of the disputed domain names creates an unjustified affiliation of the MERCURE, NOVOTEL and SOFITEL marks, which cannot be regarded as a fair use of the Complainants’ notorious trademarks.
A core factor in assessing fair use of the disputed domain names is that they do not falsely suggest affiliation with the Complainants’ trademarks. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainants’ MERCURE, NOVOTEL and SOFITEL marks in their entirety adding the geographical term “Iran”, which also may point to the Complainants and their notorious trademarks, as an indication of the official websites related to the Complainants’ hotels located in this country and/or any other services provided by the Complainants in this country. Therefore, the Panel considers that the disputed domain names suggest sponsorship or endorsement by the Complainants and there is a high risk of implied affiliation.
It is further remarkable the Respondent has not replied to the Complaints not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interests in the disputed domain names.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainants’ prima facie case, and all these case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainants establish that the disputed domain names have been registered and are being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain names:
(i) the disputed domain names incorporate the Complainants’ MERCURE, NOVOTEL and SOFITEL marks in their entirety adding a geographical term (“Iran”), which creates a likelihood of confusion or implied affiliation and the impression that the disputed domain names refer to one of the Complainants’ official websites related to their hotels and services in that country, suggesting sponsorship or endorsement by the Complainants;
(ii) the Complainant’s trademarks are notorious in their sector and the Complainant operates internationally including Iran (where the Respondent is located according to the Registrar verification) and other Middle Eastern neighboring countries;
(iii) the disputed domain names resolve to a website unrelated to the Complainants’ notorious marks of probable political content;
(iv) the website linked to the disputed domain names does not include any reference to the Complainants and/or the MERCURE, NOVOTEL and SOFITEL marks, and does not seem to provide any information about its provider and/or the owner of the disputed domain names and/or its lack of relationship with the Complainants and their notorious marks; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain names and has not come forward to deny the Complainants’ assertions of bad faith, choosing not to reply to the Complaint.
It is further to be noted that the Respondent has registered the three disputed domain names, which incorporate the Complainants’ notorious MERCURE, NOVOTEL and SOFITEL marks, as well as, at least, two other domain names incorporating Complainants’ notorious trademarks related to the ccTLD “.ir”, which have been subject of previous proceedings under the Policy (ACCOR v. Mohammad Reza Aghaei, supra, and ACCOR v. Mohammad Reza Aghaei, supra). The Panel considers that these circumstances corroborate the Respondent’s bad faith, indicating a pattern of bad faith registrations targeting the Complainants’ trademarks.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain names were very likely registered targeting the Complainants’ notorious marks with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to a website with political content, which does not raise a fair or legitimate use, and constitutes bad faith under the Policy. See section 3.1, WIPO Overview 3.0.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainants have met their burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element 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 <mercureiran.ir>, <novoteliran.ir> and <sofiteliran.ir> be transferred to the Complainants.
Reyes Campello Estebaranz
Sole Panelist
Date: October 1, 2020
1 See Accor SA v. Philip Korn, WIPO Case No. DCH2006-0007; Accor S.A. v. Gary Weber, WIPO Case No. D2007-1053; Accor and SoLuxury HMC v. PrivacyProtect.org, Domain Admin / Jean Marie Bergeron, BGSR Media Systems SA, WIPO Case No. D2012-0004; Accor, SoLuxury HMC v. Weiping Lee, WIPO Case No. D2012-0031; Accor, SoLuxury HMC v. PrivacyProtect.org, n/a Ian Harding, WIPO Case No. D2011-0863; Accor, SoLuxury HMC v. Yunsung, WIPO Case No. D2010-2198; Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574; Accor v. Mao Jian Ting, WIPO Case No. D2012-0189; Accor SA v. Jianfeng Wu, www.Juming.com, WIPO Case No. D2018-0127.