WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Massa, Auchan

Case No. D2018-1239

1. The Parties

Complainant is ACCOR of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

Respondent is Massa, Auchan of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <accorhotelgroup.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant’s contact details.

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 Respondent of the Complaint, and the proceedings commenced on June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2018.

The Center appointed Marina Perraki as the sole panelist in this matter on July 23, 2018. 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

According to the Complaint, Complainant is active in the hotel business for more than 45 years. It is a world leader in economic and mid-scale hotels and a major player in upscale and luxury hospitality services. It operates more than 4,000 hotels in 100 countries worldwide and counts up to 234 hotels in the United Kingdom. Complainant owns and operates several hotels under the trademarks ACCOR and ACCORHOTELS. Complainant’s group of companies includes hotel chains such as Pullman, Novotel, Grand Mercure and Ibis. As per Complaint, Complainant mainly communicates with its customers via the Internet through its websites, which include “www.accorhotels.com” and “www.accorhotels.group”.

Complainant holds numerous trademark registrations for the ACCOR and ACCORHOTELS marks, including the European Union trademark registration no 010248466 for ACCORHOTELS, filed on September 8, 2011 and registered on March 20, 2012 for services in International classes 35, 39, and 43.

Complainant is also the owner of a number of domain name registrations including the domain name <accorhotels.com>, registered on April 30, 1998, the domain name <accorhotels.group>, registered on May 31, 2016, and the domain name <accor.com>, registered on February 23, 1998.

The Domain Name was registered on March 8, 2018 and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the ACCOR and ACCORHOTELS mark.

The Panel finds that the Domain Name <accorhotelgroup.com> is confusingly similar with the ACCORHOTELS trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The omission of the letter “s” in the “hotels” portion of the Domain Name is disregarded as it merely signifies the singular grammatical number (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).

The word “group” which is added in the Domain Name is also disregarded as it is a non-distinctive dictionary term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; WIPO Overview 3.0, section 1.8).

The generic top-level domain (“gTLD”) “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds that the Domain Name <accorhotelgroup.com> is confusingly similar to the ACCORHOTEL trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name employs a minor misspelling (omission of letter “s” from the “hotels” portion of Complainant’s trademark) which signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, WIPO Overview 3.0, section 1.9).

Furthermore, as Complainant has demonstrated, the Domain Name leads to an inactive website, whereas an email server has been configured on the Domain Name. These indicate the intention of Respondent to potentially use the Domain Name for purposes other than hosting a website, including potentially for constructing an email composition containing the Domain Name, to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Lastly, the Domain Name, per Complainant, was initially registered with a privacy shield service. It was only after Complainant sent on March 14, 2018, a cease-and-desist letter and subsequent reminders to the anonymous service, with no reply, that the Domain Name appeared as registered in the name of Respondent.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s ACCOR trademark is well-known for hotels. Furthermore ACCOR is a fictitious word. Because the ACCOR and ACCORHOTELS marks had been widely used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of ACCORHOTELS mark on the Internet, namely “www.accorhotels.com” and “www.accorhotels.group” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely hotel services for which online booking is widely used.

Respondent could have searched the European Union trademark registry and would have found Complainant’s prior registration in respect of ACCORHOTELS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Name incorporates in whole Complainant’s mark minus a letter “s” plus an additional term “group” that corresponds to Complainant’s nature as member of a group of companies and it is practically identical to an existing domain name of Complainant, namely <accorhotels.group> registered on May 31, 2016 and widely used for corresponding Complainant’s website as per Complaint. Use of the words “hotel” and “group” in the disputed domain name therefore creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

Lastly, as Complainant has demonstrated, initially the disputed domain name was registered with a privacy shield service to hide the holder’s identity and then, subsequent to Complainant’ s cease and desist letter, it appeared to be registered by Respondent.

As regards bad faith use, Complainant demonstrated that the disputed Domain Name leads to an inactive website and there is a risk that it be used for purposes other than to host a website. This is indicated by the fact that, as per Complainant, an email server has been configured on the Domain Name. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). Furthermore, use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognised (in, inter alia, Accor v. Domains By Proxy, LLC / Abdulrahman Almarri, WIPO Case No. D2015-0777; Accor v. Domain Whois Protection Service Whois Agent / lijiewei, WIPO Case No. D2014-1482; Accor and SoLuxury HMC v. “m on”, WIPO Case No. D2012-2262), (ii) the failure of Respondent to submit a response, (iii) the initial concealment of the Domain Name holder’s identity through use of a privacy shield and the current appearance of Respondent as holder of the Domain Name subsequent to the cease and desist letter of Complainant, and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the corresponding website is inactive and an email server has been configured on the Domain Name, which indicates a risk that Respondent potentially uses the Domain Name to create an email address to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

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 <accorhotelgroup.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: August 6, 2018