WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Gerard Dulan / Contact Privacy Inc. Customer 0141224969

Case No. D2015-1713

1. The Parties

The Complainant is ACCOR of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Gerard Dulan of Paris, France / Contact Privacy Inc. Customer 0141224969 of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <accor-webservice.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2015, 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 30, 2015 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 October 1, 2015.

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 proceeding commenced on October 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2015.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on November 3, 2015. 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.

4. Factual Background

The Complainant is the owner of the following trademark registrations:

- Canadian trademark ACCOR and Device, No. TMA765344 registered on April 29, 2010;

- Canadian trademark ACCOR No. TMA595006 registered on November 18, 2003;

- French trademark ACCOR No. 1237864 registered on May 13, 1985 covering goods and services in classes 16, 28, 35, 39, 40, 43 44 and 45 and duly renewed;

- French trademark ACCOR and Device No. 3857724 registered on September 9, 2011 covering goods and services in classes 3, 9, 16, 35, 36, 38 39, 41, 42, 43, 44 and 45.

In addition, the Complainant operates, among other, the following domain name reflecting its trademark in order to promote its services:

- <accorhotels.com> registered on April 30, 1998.

The Complainant asserts that it is the world leader in economy and mid-scale hotels, and a major player in upscale and luxury hospitality services. For more than 45 years, it has provided customers with expertise acquired in this core business.

The Complainant explains that it operates more than 3,700 hotels in 92 countries worldwide and over 450, 000 rooms, from economy to upscale. The group includes notable hotel chains such as Pullman, Novotel, Grand Mercure and Ibis. The Complainant’s brands offer hotel stays tailored to the specific needs of each business and leisure customer and are recognized and appreciated around the world for their service quality.

The Complainant’s network comprises eight hotels, located in Canada in major cities and prime tourist destinations.

The Complainant contends that the disputed domain name <accor-webservice.com> reproduces entirely the Complainant’s trademark ACCOR and asserts that the disputed domain name previously resolved to a “Yahoo Security” page requesting login/password credentials. According to the Complainant, this is clearly a case of phishing aiming to obtain Internet users’ data information.

The Complainant attempted to resolve the dispute amicably by sending a cease-and-desist letter to the webhost via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the webhost to deactivate the disputed domain name.

The litigious webpage was subsequently deactivated.

The disputed domain name was registered using a WhoIs privacy service.

Pursuant to the notification of the Complaint, the registrant’s name was disclosed. The registrant of the disputed domain name appears to be a private person domiciled in Paris, France.

In view of the seriousness of the infringement, the Complainant considers that it had no other choice but to directly initiate a UDRP proceeding against the Respondent in order to obtain the transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name <accor-webservice.com> reproduces entirely the Complainant’s trademark ACCOR and cites previous UDRP decisions, including Accor v. Domains By Proxy, LLC / Abdulrahman Almarri, WIPO Case No. D2015-0777, to assert that previous UDRP panels have considered that the Complainant’s trademark ACCOR is “well-known” or “famous”.

The Complainant recalls that in many UDRP decisions, such as Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegsitration.com, Domain Admin, WIPO Case No. D2010-1059, UDRP panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.

In addition, the Complainant contends that the disputed domain name <accor-webservice.com> associates the Complainant’s trademark ACCOR to the generic terms “web” and “services”, not dispelling any likelihood of confusion. On the contrary, the Complainant asserts that the generic terms “web” and “services” increase the level of confusion since Internet users could come to believe that the disputed domain name would direct them to the Complainant’s website and services. Therefore, the Complainant considers that the likelihood of confusion is heightened.

The Complainant observes that additionally, the disputed domain name includes a hyphen, and recalls that in UDRP decision like Quilvest SA & Quilvest Banque Privée v. Peter Cross, WIPO Case No. D2007-0587, UDRP panels have consistently determined that a hyphen cannot abolish the likelihood of confusion between the trademark and the domain name at issue.

Finally, the Complainant specifies that the extension “.com” present in the disputed domain name is not to be taken into consideration when examining the identity or confusing similarity between the Complainant’s trademark and the disputed domain name, as was found in the UDRP decision Accor v. Noldc Inc., WIPO Case No. D2005-0016.

The Complainant considers accordingly that, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.

For all of the above mentioned reasons, the disputed domain name is identical or confusingly similar to the trademark ACCOR in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights, or legitimate interests, in the disputed domain name. The Complainant asserts first that the registration of the trademark ACCOR preceded the registration of the disputed domain name by years.

The Complainant contends moreover that the disputed domain name is so similar to the famous trademark of the Complainant, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

The Complainant asserts furthermore that the Respondent is not commonly known by the name “Accor”, in any way affiliated with the Complainant, nor authorized or licensed to use the trademark ACCOR, or to seek registration of any domain name incorporating said trademark.

According to the Complainant, in addition, 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. To support this argument, the Complainant relies on the fact that the disputed domain name previously resolved to a “Yahoo Security” page requesting login/password credentials. The Complainant deduces that this is clearly a case of phishing aiming to obtain confidential information from the Complainant’s clients believing that the disputed domain name is endorsed by the Complainant.

The Complainant adds that it seems that the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it. Thus, according to the Complainant, such behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

For all of the above-cited reasons, the Complainant considers that it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proven.

The Complainant asserts that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name.

The Complainants argues that the Complainant’s trademark ACCOR is well-known throughout the world including in Canada where the privacy service is located. Furthermore, as the Respondent Gerard Dulan is French, the Complainant notes that the Complainant’s trademark ACCOR is obviously well known in France. Indeed, several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the said trademark.

The Complainant relies on UDRP decisions such as Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 and NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077, to assert that the Respondent’s knowledge of the Complainant’s intellectual property rights, including its trademarks, at the time of registration of the disputed domain name proves bad faith registration.

The Complainant contends that in light of the reputation of the Complainant’s trademark, the Respondent’s reproduction of the trademark ACCOR in its entirety in the disputed domain name clearly proves that Respondent was aware of the existence of the Complainant’s trademark.

The Complainant relies on The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 to assert that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which it had no right or legitimate interest.

Finally, the Complainant considers the fact that the Respondent registered the disputed domain name through a privacy shield service is the evidence that the Respondent wanted to hide its identity and contact details, thus, preventing the Complainant from contacting it. The Complainant recalls that prior UDRP panels confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith, including Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729.

According to the Complainant, use in bad faith is first and foremost proven by the fact that the Respondent is engaged in a phishing scheme and clearly aims at stealing valuable information through the use of Internet users’ email addresses and passwords. The Complainant recalls that UDRP panels, in decision such as OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037, have considered that the use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith.

After the sending of the cease-and-desist letter by the Complainant, the webhost deactivated the litigious website, but, according to the Complainant, even if the disputed domain name resolves to an inactive page, this state of inactivity does not mean that the disputed domain name is used in good faith. The Complainant recalls that in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy that the disputed domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.

Similarly, the Complainant contends that reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.

The Complainant asserts that such use of the disputed domain name was not authorized by the Complainant; in this respect, previous UDRP panels have considered, especially in Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281, that in the absence of any license or permission from the complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. The Complainant recalls that according to prior UDRP panel decisions, this type of conduct constitutes evidence of the Respondents’ bad faith, as was notably found in the L’oreal v. Chenxiansheng, WIPO Case No. D2009-0242.

According to the Complainant, all aforementioned circumstances confirm that the disputed domain name has been registered and is being used in bad faith.

Consequently, it is established that the Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To prevail in the proceedings under the Policy, the Complainant must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Likewise, under paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests in the disputed domain name in its response to the Complaint by proving, among others, the circumstances mentioned under this paragraph of the Policy.

A. Identical or Confusingly Similar

The Complainant has clearly established rights in the ACCOR trademark.

The disputed domain name <accor-webservice.com> reproduces entirely the widely known Complainant’s trademark ACCOR.

The choice of the terms “web” and “services” is not anodyne. The Respondent likely chose these terms in order to lead Internet users to believe that the disputed domain name would direct them to the Complainant’s website and services.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, 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 disputed domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, its 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 Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.

In the circumstances of this case, the Panel finds that this constitutes a clear acknowledgment that it has no rights or legitimate interests in the disputed domain name.

There is nothing that indicates that the Respondent is commonly known by the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use the ACCOR trademarks, or to register any domain name incorporating the ACCOR trademark.

The Respondent has made an unfair use of the disputed domain name.

Before the cease and desist letter was sent, the disputed domain name resolved to a “Yahoo Security” page requesting login/password credentials. Because of the obvious fame of the Complainant, any Internet user could rightly assume that this web page was linked to the Complainant.

The fact that the webpage at the disputed domain name would require personal information to access the website is proof that the first goal of the Respondent was to collect personal data from Internet users.

These elements demonstrate clearly a phishing scheme, which does not establish rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name. It provides that:

“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:

(i) circumstances indicating that you have registered or you have 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 documented out-of-pocket costs directly related to the domain name; or

(ii) you 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 have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The ACCOR trademarks are widely known worldwide.

The Respondent, who is domiciled in France, was perfectly aware of the Complainant’s rights in the ACCOR trademarks when registering the disputed domain name.

As alleged in the Complaint, the disputed domain name was registered by the Respondent using a privacy shield service in order to hide its identity and to prevent the Complainant from contacting it.

The organized phishing scheme practice described by the Complainant shows that the disputed domain name has been registered primarily for the purpose of defrauding Internet users into revealing personal information, and to disrupt the Complainant’s business.

Therefore the Panel finds that the disputed domain name was registered in bad faith.

The Respondent’s action is in line with paragraph 4(b)(iv) of the Policy, as the Respondent intentionally attempted to steal valuable information such as usernames and passwords from Internet users through the use of a domain name imitating the Complainant’s trademarks and domain name.

Even if this webpage was subsequently deactivated, the current apparent passive use of the disputed domain name can be considered as a case of bad faith in the circumstances of this case.

The Panel finds that the Complainant has made out that the disputed domain name was registered and is being used in bad faith.

Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

7. Decision

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 <accor-webservice.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: November 17, 2015