The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Domain Whois Protection Service Whois Agent of Hangzhou, Zhejiang, China / lijiewei of Jinhua, Zhejiang, China.
The disputed domain name <accorhoteld.com> is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 10, 2014. On September 8, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 9, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 22, 2014. 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 Complainant owns and operates more than 3,500 hotels in 92 countries worldwide and over 450,000 rooms, from economy to upscale. The group includes notable hotel chains such as Pullman, Novotel, Mercure and Ibis. The Complainant is the owner of the ACCOR and ACCOR HOTELS trademarks registrations in many countries including China.
The Complainant also uses the domain names <accor.cn> (registered on April 18, 2003) and <accorhotels.com> (registered on June 13, 2012) to reflect its trademarks and to promote its services.
The Complainant became aware of the Respondent’s registration of the disputed domain name <accorhoteld.com> which reproduces its trademark ACCOR with the association of the misspelled generic term “hoteld”. The disputed domain name was used to re-direct towards the Complainant’s official website but it presently resolves to a parking page displaying commercial links, and some of them are related to hotels and notably those of the Complainant’s and its competitors.
The disputed domain name was registered on July 29, 2013.
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
1. The Complainant owns and operates several hotels under the trademarks ACCOR and ACCOR HOTELS (the “ACCOR marks”), which are trademarks, protected worldwide including China in relation to hotels and restaurants services.
2. The disputed domain name contains the Complainant’s trademark in its entirety.
3. Previous UDRP panels have considered the Complainant’s ACCOR marks as well known.
4. The addition of the misspelled generic term “hoteld” further heightens the confusing similarity with the trademark ACCOR since it corresponds to the Complainant’s field of activities.
5. In addition, the disputed domain name is an imitation of the Complainant’s trademark ACCOR HOTELS. The mere substitution of the letter “s” by the letter “d” in the term “hotels” does not significantly affect the appearance or pronunciation of the disputed domain name. This practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainant’s trademark.
6. Taking into consideration the previous website to which the disputed domain name directed, the likelihood of confusion was further amplified. Indeed, the disputed domain name <accorhoteld.com> previously directed to the official website of the Complainant. Internet users have undoubtedly been misguided to believe that the disputed domain name <accorhoteld.com> belongs to the Complainant.
7. The mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1. The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of several ACCOR and ACCOR HOTELS trademarks preceded the registration of the disputed domain name <accorhoteld.com> for years.
2. The disputed domain name is so close to the Complainant’s well-known trademarks ACCOR and ACCOR HOTELS that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name <accorhoteld.com>.
3. The Respondent is neither commonly known by the name “accor” nor by the name “accor hotels”, in any way affiliated with the Complainant, nor authorized or licensed to use ACCOR and ACCOR HOTELS trademarks, or to seek registration of any domain name incorporating said mark.
4. The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name previously directed to the Complainant’s official website which now resolves to a parking page displaying commercial links, and some of them are related to hotels notably those of the Complainant and its competitors. The disputed domain name directs Internet users to a parking page with pay-per-click links which are likely to generate revenues. Therefore, it cannot be said that the Respondent is making a legitimate noncommercial or fair use of disputed domain name.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1. The Complainant is well known throughout the world, including in China. It is implausible that the Respondent was unaware of the Complainant when disputed domain name was registered.
2. In light of the reputation of the Complainant’s trademark ACCOR, the Respondent’s reproduction of the ACCOR trademark in its entirety and imitation of ACCOR HOTELS coupled with the previous redirection of the disputed domain name towards the Complainant’s official website clearly proves that the Respondent was aware of the existence of the Complainant’s trademark especially when considering the fact that the Complainant has some of its hotels located in the province in China where the Respondent is located.
3. The disputed domain name is an imitation of the ACCOR HOTELS trademark. The mere substitution of the letter “s” by the letter “d” in the term “hotels” is a form of typosquatting which in itself is an evidence of bad faith.
4. The disputed domain name previously directed towards the Complainant’s official website. Consequently, there is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent.
5. Presently, the disputed domain name is used to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues. UDRP panels have held that the use of the domain name to divert Internet users and to direct them to a webpage providing click through revenues to respondent evidences bad faith. There is no indication of the Respondent’s own activities on the aforementioned site.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented to the Panel, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding. The Respondent did not comment on the Complainant’s request.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceedings is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceedings ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the website which was connected to the disputed domain name was in English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations.
Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. The Panel decides that the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the ACCOR marks in connection with hotel services in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the ACCOR marks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s ACCOR marks are well known in connection with hotel services offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant’s products or services.
The disputed domain name consists of the Complainant’s ACCOR mark in its entirety with the addition of the term “hoteld” and the gTLD suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “accor” which is identical to the Complainant’s registered trademarks ACCOR. Given the fame and notoriety of the Complainant’s ACCOR marks, the addition of the term “hoteld” which is a misspelling of the word “hotels” does not provide sufficient distinction from the Complainant’s trademark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s ACCOR marks and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the ACCOR marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “accorhoteld”;
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the ACCOR marks;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) On the contrary, the disputed domain name is currently connected to a parking page displaying commercial links, and some of them are related to hotels notably those of the Complainant and its competitors. The Panel finds that the Respondent therefore does not have the right to use ACCOR marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
(5) The Complainant and its ACCOR marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with hotel services and are registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the ACCOR marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] 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.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its ACCOR marks, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has also registered and used domain names which incorporate the ACCOR marks such as <accor.cn> and <accorhotels.com>. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name in 2013. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a parking page displaying commercial links, and some of them are related to hotels notably those of the Complainant and its competitors. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s ACCOR marks and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a to a parking page displaying commercial links, and some of them are related to hotels notably those of the Complainant and its competitors, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.
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 <accorhoteld.com> be cancelled.
Susanna H.S. Leong
Sole Panelist
Date: November 13, 2014