The Complainant is Accor of Paris, France, represented by Dreyfus & Associés, France.
The Respondent is Reap Usd of "Chao Yang", Beijing, China.
The disputed domain name <accorhotels.xyz> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 3, 2016, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On February 4, 2016, the Complainant confirmed with the Center it requested English as the language of the proceeding. The Respondent did not submit any comments within the specified due date.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on February 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 9, 2016. 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 is Accor, one of the world's leading provider of hotel services. The Complainant has been active for over 45 years and operates more than 3,600 hotels in 92 countries worldwide. The group includes hotel chains such as PULLMAN, NOVOTEL, MERCURE and IBIS.
The Complainant is present around the world including the region of Asia Pacific where it counts up to 647 hotels with 123,600 rooms. In China the Complainant operates 149 hotels with 33,760 rooms and 18,653 employees.
The Complainant is the owner of multiple trademark registrations for the mark ACCORHOTELS, as well as ACCOR. For example: International trademark ACCORHOTELS No. 1103847, registered on December 12, 2011; International trademark ACCOR No. 727696, dated of December 28, 1999, and more.
The disputed domain name <accorhotels.xyz> was registered on November 18, 2015.
The disputed domain name previously resolved to a website offering the disputed domain name for sale and to a website displaying commercial links related to hotel services (Annex 1 to the Complaint).
The Complainant sent the Respondent a cease and desist letter on December 10, 2015, which the Respondent replied.
The Complainant argues that it sent the Complainant a cease-and-desist letter asking the Respondent to cease the use of the disputed domain name and to transfer it. The Respondent has replied by confirming he has stopped using the disputed domain name but refused to transfer it to the Complainant. Considering this, the Complainant has filed its Complaint and based it on the following arguments.
The Complainant argues that the disputed domain name is identical or confusingly similar to the ACCOR and ACCORHOTELS trademarks, in which the Complainant has rights. The Complainant operates the domain names <accor.com> and <accorhotels.com> reflecting its trademarks.
The Complainant further argues that the disputed domain name reproduces entirely its trademark ACCORHOTELS and is confusingly similar to its trademark ACCOR.
The Complainant further argues that the disputed domain name could mislead users into thinking that it is, in some ways, associated with the Complainant.
The Complainant further argues that the extension ".xyz" is insufficient to distinguish the disputed domain name from its trademarks.
The Complainant further argues that the Respondent is not commonly known by the name ACCOR nor has any prior rights or legitimate interests in respect of the disputed domain name, and that the Complainant had not licensed or otherwise permitted the Respondent to use its trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further contends that in view of the Respondent's email and the fact that the disputed domain name was offered for sale confirms that the Respondent was not intending to develop a legitimate activity through the disputed domain name.
The Complainant further contends that the Respondent failed to show any intention of noncommercial or fair use of the disputed domain name and that it has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that in view of exchanges between the Respondent and the Complainant, it is clear that the Respondent did not deny knowing the Complainant's existence and has even accepted to cease the use of the disputed domain name.
The Complainant argues that the disputed domain name used to direct to a website offering the disputed domain name for sale, this is not a legitimate noncommercial or fair.
The Complainant further argues that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name and this demonstrates the Respondent's bad faith.
The Complainant further argues that the Respondent's use of the disputed domain name in a way that reproduces the Complainant's name and two of the Complainant's trademarks clearly demonstrates Respondent's knowledge of the Complainant's existence and its commercial activity and indicates that the registration of the disputed domain name was in bad faith.
The Complainant further argues that the disputed domain name is connected with its well-known trademarks. The very use of the trademarks by someone with no connection to the trademarks proves opportunistic bad faith.
The Complainant further argues that the Respondent registered the disputed domain name and intended to sell it and this constitutes its use in bad faith. Now, the Respondent started using the disputed domain name displaying pay-per-click links which are likely to generate revenues.
The Complainant further contends that the Respondent registered the disputed domain name to direct Internet users to a webpage displaying commercial links related to hotel services, booking of Complainant's hotels and its competitors, and this is considered as bad faith use.
The Complainant further contends that Respondent registered the disputed domain name to prevent the Complainant from using its trademarks in the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Paragraph 11(a) of the Rules provides that:
"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."
The Registrar has confirmed that the language of the Registration Agreement of the disputed domain name is Chinese
The Complainant requested that the language of proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) According to the Complainant it has no knowledge of Chinese. The Panel accepts the Complainant's claim that the use of a language other than English would impose a significant burden on the Complainant in view of the proceeding in question.
c) The disputed domain name redirects to a website operating in English;
d) The Respondent responded in English to the Complainant's cease-and-desist letter, and did not object to the Complainant's request that English be the language of proceeding.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark ACCORHOTELS, as well as ACCOR. For example: International trademark ACCORHOTELS No. 1103847, registered on December 12, 2011; International trademark ACCOR No. 727696, dated of December 28, 1999, and more.
The disputed domain name reproduces entirely the Complainant's trademark ACCORHOTELS and is also confusingly similar to the Complainant's ACCOR trademark.
Previous UDRP panels have ruled that the generic Top-Level Domain (gTLD) suffix generally has no capacity to distinguish a domain name from a trademark (See Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733,); Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080).
The addition of the gTLD ".xyz" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD is typically without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's ACCORHOTELS nor ACCOR trademarks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the ACCOR trademark since at least the year 1983. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant provided evidence to demonstrate its trademark's vast goodwill. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
The Panel notes that the Complainant has established that it's ACCOR and ACCORHOTELS trademark has been recognized in prior UDRP cases as well-known and have been used in connection with the Complainant's hotel hospitality activity.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds that in accordance to the Respondent's reply to the Complainant cease-and-desist letter, the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. The Respondent's actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".)
Further, the Panel takes into consideration that the Respondent failed to comply with the Complainant's requests. Previous panels have considered this to constitute additional evidence of the respondent's bad faith (see Alstom v. Yulei, WIPO Case No. D2007-0424 ).
Based on the evidence that was presented to the Panel, including the Respondent's reply, the use made in the disputed domain name of offering it for sale and changing to a website with commercial links, the late registration of the disputed domain name, the use of the Complainant's trademarks in the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <accorhotels.xyz> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: March 23, 2016