WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor SA v. Super Privacy Service LTD c/o Dynadot

Case No. D2019-1884

1. The Parties

The Complainant is Accor SA, France, represented by Dreyfus & associés, France.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.

2. The Domain Name and Registrar

The disputed domain name <novotelaccorhotels.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.

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, and the proceedings commenced on August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2019.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 3, 2019. 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 Accor is a French company and is a world leader in lower cost to mid-range hotels with more than 45 years of business activity. The Complainant operates more than 4,900 hotels in 110 countries worldwide. The Complainant’s hotels range from economy to upscale, featuring notable hotel chains such as Novotel, Sofitel, Mercure, Grand Mercure, Pullman, Fairmont, Raffles and Ibis.

The Complainant is the owner of the trademarks ACCOR, ACCORHOTELS, NOVOTEL and NOVOTEL ACCOR across various jurisdictions (hereafter jointly “ACCOR trademarks”). These registrations include:

- International trademark ACCOR with registration No. 742032, registered on August 25, 2000, in International class 38;

- European Union trademark ACCORHOTELS with registration No. 010248466, registered on March 20, 2012, in International classes 35, 39, and 43;

- International trademark ACCORHOTELS with registration No. 1103847, registered on December 12, 2011, in International classes 35, 39 and 43;

- European Union trademark NOVOTEL with registration No. 010429082, registered on April 20, 2012, in International class 43;

- International trademark NOVOTEL with registration No. 785645, registered on June 25, 2002, in International class 43.

Additionally, the Complainant is also the registrant of numerous domain names such as <accor.com>, <accorhotels.com> and <novotel.com>, containing the trademarks ACCOR, ACCORHOTELS and NOVOTEL.

The disputed domain name <novotelaccorhotels.com> was registered on April 18, 2019, well after the Complainant secured rights to the trademarks. The disputed domain name currently resolves to an active webpage entitled “Hôtel Novotel Paris Centre Tour Eiffel” and which is attached to an email server.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. It represents that the disputed domain name reproduces the terms ACCOR, ACCORHOTELS and NOVOTEL in their entirety.

The Complainant makes reference to previous UDRP decisions recognizing the strong reputation and renown through the world of its ACCOR trademarks. Relying on L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627, the Complainant claims that the incorporation of a well-known trademark into a domain name is sufficient ground for a finding of likelihood of confusion.

The Complainant also maintains that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent is not affiliated in any way with the Complainant and has not been authorized by the Complainant to use its trademarks or to seek registration of any domain names incorporating said trademarks. Besides, the registration of the numerous ACCOR trademarks preceded the registration of the disputed domain name by several years.

There is further no evidence that the Respondent is commonly known by the disputed domain name.

Moreover, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. The disputed domain name currently resolves to an active webpage entitled “Hôtel Novotel Paris Centre Tour Eiffel” that is a direct copy of the Complainant’s website, including the content, visuals, layouts and the inclusion of the Complainant’s trademarks. Therefore, the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

Additionally, the Complainant states that the Respondent is potentially engaged in a phishing scheme, a practice intended to defraud consumers into revealing financial information. Consequently, the Complainant states that the disputed domain name is not used in any type of legitimate business or services but to deceive consumers, who incorrectly understand that they are referred to the Complainant’s bona fide services.

(c) The disputed domain name was registered and is being used in bad faith.

With respect to bad faith, the Complainant states that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name because the Complainant is well known throughout the world. In many UDRP decisions the panels considered that the Complainant’s ACCOR trademarks enjoy a strong reputation worldwide.

Accordingly, the disputed domain name was registered based on the attractiveness of the Complainant’s trademarks that its very use by someone with no connection to the Complainant suggests opportunistic bad faith.

In addition, the Complainant’s trademark rights in the ACCOR trademarks significantly predate the registration of the disputed domain name. Previous UDRP Panels have found that knowledge of a corresponding trademark at the time of registration is strong evidence of bad faith.

The Complainant also contends that under section 2 of the ICANN Policy “it was [the Respondent’s] duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name”. A quick trademark search or even a simple Google search would have been sufficient to reveal to the Respondent the existence of the Complainant and its rights in the ACCOR trademarks.

By using the disputed domain name, which is confusingly similar to the Complainant’s trademarks, to offer services in the exact same field of endeavour as the Complainant, i.e., hotel services, the Respondent is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant’s website to his website for commercial gain. Such use, which at its heart relies on exploiting user confusion, cannot constitute bona fide use.

The Complainant deems that the Respondent is voluntarily creating a risk of confusion by suggesting that he is linked to the Complainant and therefore would benefit from his audience’s trust to – possibly – later redirect them to other websites.

Finally, an email server has been configured on the disputed domain name, which according to the Complainant could indicate that the Respondent is engaged in a phishing scheme for obtaining financial information such as credit cards (see Bureau Veritas v. Xavier Garreau, WIPO Case No. D2017-1570).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in the ACCOR trademarks.

Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

Thirdly, the disputed domain name fully incorporates the Complainant’s ACCOR trademarks in which the Complainant has exclusive rights.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s ACCOR trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii); or

(i) before any notice to you 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 (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 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP Panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

In fact the evidence shows that the disputed domain name resolves to a page purporting to be offering services in the exact same field of endeavor as the Complainant, i.e., hotel services, seeking commercial gain, copying contents and layouts of the Complainant, and therefore the Respondent can have no rights or legitimate interests in the disputed domain name. The email server associated with the disputed domain name (noting the nature of the disputed domain name and the website at it) can be consider further evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 online 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

A registration in bad faith occurs, inter alia, where the Respondent knew or should have known of the registration and use of the trademarks prior to registering the disputed domain name. This Panel finds, similarly to other UDPR panels, that the Complainant’s ACCOR trademarks are well known and have acquired worldwide recognition and reputation with regard to its services. It is therefore extremely unlikely that the Respondent was unaware of the Complainant’s ACCOR trademarks at the time of registration of the disputed domain name. Such conclusion of bad faith is according to the Panel enhanced by the fact that the ACCOR trademarks were registered long before the registration of the disputed domain name.

The Complainant submits that is well-settled that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. Given the reputation of the ACCOR trademarks and the nature of the disputed domain name, registration in bad faith can be inferred.

Moreover, the Complainant submits that the disputed domain name may have been registered primarily for the purpose of commercial gain which constitutes bad faith registration. At the time of the Decision the disputed domain name is being used in connection with the very same services provided by the Complainant to mislead Internet users looking for the Complainant’s services. In this respect, Internet users are, in some cases redirected to the Complainant’s website. The suggestion that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content is a reasonable one” (see Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case No. D2002-0109).

Finally, the Complainant’s has shown that the Respondent has configured email services on the disputed domain name. Considering the nature of the disputed domain name and its use as a website (as described above) the attachment of email services to the disputed domain name suggests that the Respondent is likely to engage in efforts to operate a phishing scheme through that domain name.

In light of the foregoing, this Panel finds that the disputed domain name was registered in bad faith and is being used by the Respondent in bad faith under the Policy.

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 <novotelaccorhotels.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: September 17, 2019