The Complainants are Accor and SoLuxury HMC, both of Evry, France, represented by Dreyfus & associés, France.
The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and Therese Kerr of New York, New York, United States.
The disputed domain names <blogaccor.com>, <blogaccorhotels.com>, <blogibishotel.com>, <blogmercure.com>, <blognovotel.com> and <blogsofitel.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2009. On February 25, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 25, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names as “Therese Kerr” and provided contact details which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 3, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on March 5, 2009. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 27, 2009.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 6, 2009. 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 language of this administrative proceeding is English, being the language of the registration agreement.
The Complainants operate a business with around 4,000 hotels in more than 90 countries under the following brands:
A. ACCOR: Its hotels and hospitality business operates under the name and trademark ACCOR in ninety countries including the United States (“USA”). Complainants are the owners of several trademarks consisting of, or including the word “accor”, in respect of hotel and related services, including International Registration No. 480492 dated November 10, 1983 and a registration in the USA dating from July 25, 2007. They own the domain names <accorhotels.com> and <accor.com> both registered in 1998 and operates websites relating to its hotels at these domain names.
B. SOFITEL: Its premium level hotels operate under the name and trademark SOFITEL in fifty countries including the USA. Complainants are the owners of several trademarks consisting of, or including the word “sofitel”, in respect of hotel and related services, including International Registration No. 406255 dated April 18, 1975 and three registrations that cover the USA two of which date from August 26, 2005 and the other from April 23, 2007. They own the domain name <sofitel.com> registered in 1997 and operates a website relating to its hotels at that domain name.
C. NOVOTEL: Its four star level hotels operate under the name and trademark NOVOTEL in sixty one countries including the USA. Complainants are the owners of several trademarks consisting of, or including the word “novotel”, in respect of hotel and related services, including International Registration No. 352918 dated November 25, 1968 and two other registrations covering the USA dating from April 24, 1991 and December 9, 2005 respectively. They own the domain name <novotel.com> registered in 1997 and operates a website relating to its hotels at that domain name.
D. MERCURE: Its non-standardized midscale hotels operate under the name and trademark MERCURE in almost fifty countries including the USA. Complainants are the owners of several trademarks consisting of, or including the word “mercure”, in respect of hotel and related services, including International Registration No. 403334 dated December 14, 1973 and a registration in the USA dating from April 18, 1977. They own the domain name <mercure.com> registered in 1996 and operates a website relating to its hotels at that domain name.
E. IBIS: Their economy level hotels operate under the name and trademark IBIS in forty countries including the USA. Complainants are the owners of several trademarks consisting of, or including the word “ibis”, in respect of hotel and related services, including International Registration No. 420862 dated February 18, 1976 and a registration in the USA dating from July 30, 2001. They own the domain name <ibishotel.com> registered in 1997 and operates a website relating to its hotels at that domain name.
Respondent registered the domain names <blogaccorhotels.com>, <blogaccor.com>, <blogsofitel.com>, <blognovotel.com> <, <blogmercure.com> and <blogibishotel.com> (the “Disputed Domain Names”) on July 7, 2008.
The Respondent uses the Disputed Domain Names for “click-through” or “pay-per-click” (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser's keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when each of the Disputed Domain Names <blogaccorhotels.com>, <blogaccor.com>, <blogsofitel.com>, <blognovotel.com>, <blogmercure.com> and <blogibishotel.com> is typed in, it redirects traffic to a PPC landing page for hotels, including the Complainants' own website at <accorhotels.com>.
The Complainants cite their registrations of the trademarks ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS in various countries, and related marks consisting of, or including these words, as prima facie evidence of ownership.
The Complainants submit that each of its trademarks is distinctive and well-known (for ACCOR citing ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362; Accor v. Domains by Proxy, Inc./Ostrid Company, WIPO Case No. D2008-0707; for SOFITEL citing ACCOR S.A. v. springflex, WIPO Case No. D2008-0615; for NOVOTEL citing Accor v. Hua Thanh Nam, WIPO Case No. D2006-1650; for MERCURE citing ACCOR v. Marc Zibi, WIPO Case No. D2003-0561; for IBIS providing evidence comprising a search engine result) and that their rights in that mark predate the Respondents' registration of the Disputed Domain Names <blogaccorhotels.com>, <blogaccor.com>, <blogsofitel.com>, <blognovotel.com> <, <blogmercure.com> and <blogibishotel.com>. They submit that respectively the Disputed Domain Names are confusingly similar to their trademarks, because each of the Disputed Domain Names incorporates in its entirety each trademark (citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the word “blog” (citing Merck KGaA v. Paul Rostkowski, WIPO Case No. D2005-1017).
The Complainants contend that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name because the Respondents have no trademark rights in or license to use the marks ACCOR, SOFITEL, NOVOTEL, MERCURE or IBIS.
Finally, the Complainants allege that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainants contend that “it is unlikely that the registration of the domain names <blogaccorhotels.com>, <blogsofitel.com>, <blogibishotel.com>, <blogmercure.com>, <blognovotel.com> and <blogaccor.com> the same day was a pure coincidence” and that the domain names were registered “for the purpose of attracting Internet users to the Respondent's website and to make benefit of its reputation.” On the issue of use, the Complainants contend that the Respondents use the Disputed Domain Name for “pay-per-click” (“PPC”) landing pages: a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when each Disputed Domain Name <blogaccorhotels.com>, <blogsofitel.com>, <blogibishotel.com>, <blogmercure.com>, <blognovotel.com> and <blogaccor.com> is typed in, “the websites, to which the disputed domain names direct, propose sponsored links for hotels rentals included some official ACCOR websites.”
The Respondents did not reply to the Complainants' contentions.
There are three preliminary points to determine. These are: whether the complainants may file a single complaint, whether the domain names may be included in this complaint, and identifying the proper Respondents or Respondent. Following determination of these, under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.
The Policy and the Rules use the language of “complainant” and do not make express provision permitting, nor do they expressly prohibit, the filing of a single complaint by multiple complainants in this case. However, this may be appropriate in certain circumstances.
This Complaint takes the form of a single complaint brought by two complainants alleging a common grievance, namely Accor (“first Complainant”) and SoLuxury HMC (“second Complainant”). Both are companies incorporated under French law and share a common address of 2 rue de la Mare Neuve, 91000 Evry, France. The Complaint describes SoLuxury HMC as “a subsidiary of Accor”. No evidence in support of this assertion has been provided although an extract of the relevant company details would have been helpful and appropriate. However, in the absence of evidence to the contrary this Panel accepts the statement that SoLuxury HMC is a subsidiary of Accor.
That finding in itself is not necessarily decisive in determining whether the second Complainant has specifically “a common legal interest in a relevant right or rights that are allegedly affected by the conduct complained of”, or “is the target of common conduct” (see National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021). It is clear from the National Dial decision, however, that this factor strongly supports proceeding with the Complaint as filed in this case. See, also, Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331 (stating as a circumstance indicative of such a common legal interest where “multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture.”)
Pursuant to paragraph 10(a) of the Rules, the Panel also considers itself competent to independently obtain additional evidence from the Internet to clarify this issue, particularly on a matter of public record (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5). On April 16, 2009, the Panel visited the “www.accor.com” website of the first Complainant in order to investigate whether there could be found any evidence that the second Complainant has a common legal interest in a relevant right or rights that are allegedly affected by the conduct complained of, or is the target of common conduct with the first named Complainant. The Panel found evidence that SoLuxury HMC is a wholly-owned Accor subsidiary formed to hold the assets and liabilities held by Accor that relate to the management of the Sofitel brand.1 Further, a visit to the website “www.ipo.gov.uk” on the same date revealed that the second named Complainant is the registered owner of International Madrid (UK) Trade Mark No. M779873 for the mark SOFITEL ACCOR HOTELS & RESORTS registered on February 5, 2002 in IC 16, 35, 42, 43.
Accordingly, the Panel finds that the Complainants in this case do apparently have a sufficiently common legal interest in a relevant right or rights that are allegedly affected by the conduct complained of, and are also apparently the target of common conduct by the single Respondent. The Panel is also satisfied that it is procedurally efficient, and equitable, to permit the bringing of a single complaint by the two complainants in this case. Having regard to the language of the Policy and Rules, the complainant parties shall therefore be referred to jointly and severally as the “Complainant”.
The Policy and the Rules make express provision permitting consolidation of multiple domain names. Under Rules paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case, the disputed domain names have all been registered by the same registrant as confirmed by the registrar.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. In the amendment of March 5, 2009 the Complainant has named and proceeded against both Domains by Proxy, Inc. (“the first Respondent”) and “Therese Kerr” (“the second Respondent”). The first Respondent is a domain name registration privacy service and was listed as the registrant of the domain name at issue in the WhoIs prior to the filing of the Complaint. Following the filing of the Complaint, the Registrar notified the Center that the second Respondent is the registrant of the Disputed Domain Names.
The use of a privacy service by the second Respondent raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondents or Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
The first task requires the panel to decide who is the registrant of the domain name under the Policy. In The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 the panel stated that in cases like this where the information is provided by the privacy service, either from a change in the WhoIs information or from a communication to the Center by the registrar or the privacy service as to the identity of the underlying registrant panels have 1) treated the underlying registrant and the respondent jointly as respondent or 2) elected to disregard the privacy service entirely and to analyze only the acts of the underlying registrant.
Other decisions point out that a registrant may have legitimate reasons to use a privacy service or, on the other hand, that it may do so in an attempt to evade contact in the event of a domain name dispute (TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). The Rules already place a significant burden on a complainant attempting to communicate with an alleged wrongdoer. In addition, under paragraph 2(a) of the Rules, it is “the the provider's (the Center's) responsibility to employ reasonably available means calculated to achieve actual notice to Respondent.” Under paragraph 2(a)(i) of the Rules the complaint is also required to be forwarded to “all postal-mail and facsimile addresses shown in the domain name's registration data in the Registrar's WhoIs database for the registered domain-name holder, the technical contact, and the administrative contact.” Under paragraph 3(b)(v) of the Rules, the Complaint is required, inter alia, to provide the name of the respondent and contact information. The ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them.” In other words, the registrant and the registrar are required to keep in contact.
The obstacles that a privacy service causes to a complainant do not end there, even where there has been a later disclosure of the true registrant. Under paragraph 3(b)(ix) of the Rules, the complaint is required to specify the grounds on which the respondent lacks rights or legitimate interests in the disputed domain names. Under paragraph 3(b)(xiii) the complainant is required to submit in the complaint to a mutual jurisdiction of the Respondent's domicile in circumstances where the registrant has not agreed in its registration agreement to be bound by the courts at the location of the principle office of the registrar. In the present case the issue is moot, as the Complainant has submitted to the jurisdiction of the courts at the location of the principal office of the registrar and indeed the registrar has confirmed that the Respondents have submitted to the courts at that location. In determining who the proper Respondent should be here, this Panel has had regard to the following:
(a) the fact that the privacy or proxy registration service was the registrant publicly listed in the WhoIs at the time the Complaint was initiated;
(b) that the privacy or proxy registration service and underlying registrant as disclosed have both received notice of the present dispute;
(c) balancing between the interests of the Complainant, registrar, privacy service, registrant and third parties (e.g.: providers such as the Center) who may be affected;
(d) the apparently wide spread use by many registrants of privacy or proxy services;
(e) proportionality of the downside of joining the privacy service to the benefits gained by the Complainant from such joinder;
(f) the diversity of jurisdictional norms and of different degrees of privacy protection by privacy services; and
(g) whether the election made provides certainty and transparency to complainants and respondents about their rights and obligations.
Notwithstanding the quick disclosure of the second Respondent's details by the first Respondent, having regard to the commercial benefit derived by the privacy service and onerous obligations already incumbent on a complainant, and for the foregoing reasons, this Panel finds it is procedurally efficient, and equitable, to permit joinder of a privacy service as a respondent in a wide range of circumstances, including these.
Accordingly, the Panel finds that both Domains by Proxy, Inc. and Therese Kerr are proper parties respondent, and they will hereafter be referred to jointly and severally as “Respondent.”
As noted having regard to the location of the principal office of the registrar, it is uncontentious that the applicable mutual jurisdiction is the USA.
Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information on official record or provided in the Complaint. Proof of service is not required. Paragraph 2 of the Rules use the words “calculated to achieve actual notice”, not “actually achieve actual notice”. As no response was filed, the Panel has reviewed the record to ensure that the March 5, 2009 amendment to the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS in the USA and in many countries throughout the world including France. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the marks ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS trademarks, the Panel observes that the Disputed Domain Names respectively comprise (a) an exact reproduction of the Complainant's trademarks ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS (b) preceded by the word “blog” (c) followed in some cases by the word “hotel” or “hotels” and (d) in all cases followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded (See Accor v. Noldc Inc., WIPO Case No. D2005-0016 [cited by Complainant], Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: “blogaccorhotels”, “blogaccor”, “blogsofitel”, “blognovotel”, “blogmercure” and “blogibishotel”.
Having regard to the addition of the word “blog” at the beginning of each domain name, the Panel is satisfied that Internet users would understand the word “blog” to be a contraction of the noun “weblog”, meaning a type of website with regular entries in reverse chronological order generally within the scope of topics described by the title or domain of the “blog”. The word “blog” when used as a verb, means to add content to or maintain a “blog”. The prefix “blog” is generic, neutral and does not dispel the confusing similarity of the disputed domain names with the Complainant's marks (see Merck KGaA v. Paul Rostkowski, WIPO Case No. D2005-1017; Pepperdine University v. The CJ Group, LLC, WIPO Case No. D2007-1389; Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748).
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive word such as, in this case, “hotel” (or its plural, the word “hotels”): (see Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033). The confusion is compounded because the term is descriptive of the goods or services marketed by the Complainant in relation to the trademarks (see ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625; ACCOR v. Aurum Hotelbetriebsges mbH, WIPO Case No. D2003-0547; ACCOR v. VVNW Inc., WIPO Case No. D2005-0026). The respective Disputed Domain Names are therefore confusingly similar to the Complainant's ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS trademarks .
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, 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 (as an individual, business or other organization) 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 Policy places the burden on the Complainant to establish the absence of Respondent's rights or legitimate interest in the Disputed Domain Names. 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 evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because each of them is misleadingly directing Internet users to a search engine composed of sponsored links in connection with the Complainant's trademarks and thereby attempting illegitimately to trade for the purpose of deriving advertising revenue by benefitting from the reputation of the trademarks ACCOR, SOFITEL, NOVOTEL and MERCURE and IBIS (Complainant cites ACCOR v. Sergey Fomin, WIPO Case No. D2008-0706). The Complainant asserts also that it has not licensed, permitted or authorized the Respondent to use the Complainant's trademarks. The Complainant alleges that the Disputed Domain Names are not respectively used as blogs but rather, link to PPC landing pages which use “does not represent a use in connection with a bona fide offering of goods and services” (citing Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc., WIPO Case No. D2008-0627; Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449; Pepper dine University v. The CJ Group, LLC., WIPO Case No. D2007-1389; L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721). The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to PPC websites for hotels, including the Complainant's own hotels.
This conduct is compounded by the Respondent's advertising of products directly competing with Complainant's through the same web site (see, Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101). In ACCOR v. Nick V, ActionStudio, WIPO Case No. D2008-0644, the Panel found that “the disputed domain name resolved to a webpage displaying an online hotel reservation system. This cannot be considered a bona fide offering of goods or services, as it is inserted in the same field of activities of Complainant.”
In the absence of a Response, the Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.”
The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The volume of names registered by the Respondent, the unlikelihood that registering six domain names containing the Complainant's trademarks on the same day was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else's trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L'Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg, WIPO Case No. D2006-0964; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademarks ACCOR, SOFITEL, NOVOTEL and MERCURE and IBIS are so widely known for hotels that it is inconceivable that the Respondent might have registered these marks without knowing of them. (See ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362 (ACCOR trademark); Accor v. Domains by Proxy, Inc./Ostrid Company, WIPO Case No. D2008-0707 (ACCOR trademark); ACCOR S.A. v. Gary Weber, WIPO Case No. D2007-1053 (SOFITEL trademark); ACCOR S.A. v. springflex, WIPO Case No. D2008-0615 (SOFITEL trademark); Accor v. VVNW, Inc, WIPO Case No. D2005-0026 (NOVOTEL trademark); Accor v. Hua Thanh Nam, WIPO Case No. D2006-1650 NOVOTEL trademark); ACCOR v. Marc Zibi, WIPO Case No. D2003-0561 (MERCURE trademark); Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420 (ACCOR, SOFITEL, NOVOTEL, MERCURE and IBIS trademarks).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent's use of a privacy shield. The Disputed Domain Names resolve to PPC landing pages rather than websites criticical of, or satirising, the Complainant's hotels which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Ustream.TV, Inc v. Vertical Axis, Inc., WIPO Case No. D2008-0598, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
This Panel has also considered whether the involvement of the Respondent in one previous case under the Policy resulting in the transfer of four domain names is sufficient to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii) (see, Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748). The Panel finds that a “pattern” is evident having regard to the number of transfers: see Mobile Communication Service Inc. v. WebReg, RN, supra; Centron GmbH v. Michele Dinoia, WIPO Case No. D2006-0915). The pattern is not the product of mere inadvertence but evidence of bad faith.
Further, a gap of ten years between registration of the Complainant's trademarks and Respondent's registration of each Disputed Domain Name (containing the trademark) can indicate bad faith. (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct USA registrations for the trademarks MERCURE and NOVOTEL from 1977 and 1991 respectively predating its rights from the Respondent's by 31 and 17 years in these instances. The Respondent registered <blogaccorhotels.com> and <blogaccor.com> 25 years after the Complainant established international trademark rights in the ACCOR mark <blogsofitel.com> 34 years after the Complainant established international trademark rights in the SOFITEL mark, <blognovotel.com> 41 years after the Complainant established international trademark rights in the NOVOTEL mark <blogmercure.com> 32 years after the Complainant established international trademark rights in the MERCURE mark and <blogibishotel.com> 33 years after the Complainant established international trademark rights in the IBIS mark.
Two conclusions can therefore be drawn about Respondent from its use of the Disputed Domain Names resolving to PPC landing pages. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, in this Panel's view, it is also in breach of the “Universal Terms of Service for Go Daddy Software and Services” for breach of the warranty: “You warrant that each action You make is being done so in good faith and that You have no knowledge of it infringing upon or conflicting with the legal rights of a third party or a third party's trademark or trade name.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420 the Panelist stated: “The case file contains printouts of pages from the websites associated with the domain names at issue here. These so-called “parked” domain name sites contained as of the date of these printouts May 9, 2008 listings and links to hotels competing with those of the Complainant. This amounts to “steering” unsuspecting Internet visitors to competing services taking advantage of the confusion created by the similarity of the domain names to Complainant's trademarks the very essence of bad faith use under the UDRP.”
This Panel finds that the Respondent is a sophisticated party in the PPC landing page business, and must have been aware of the relevant trademarks. This Panel finds that the Respondent has taken the well-known trademarks ACCOR, SOFITEL, NOVOTEL, MERCURE or IBIS and incorporated them in the Disputed Domain Names without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to PPC landing pages hosted by GoDaddy.com for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 domain names <blogaccor.com>, <blogaccorhotels.com>, <blogibishotel.com> and <blogmercure.com>, <blognovotel.com> be transferred to the first Complainant and that the domain name <blogsofitel.com> be transferred to the second Complainant.
Nicholas Weston
Sole Panelist
Dated: April 20, 2009
1Accor Notice of Meeting, May 13 , 2008; http://www.accor.com/gb/upload/pdf/AVC_2008gb.pdf