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ACCOR v. S1A [2004] GENDND 407 (29 April 2004)

1. The Parties

The Complainant is ACOOR S.A., Evry, France, represented by Ms. Nathalie Dreyfus of Cabinet Orès, France.

The Respondent is S1A, Novosibirsk, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <acorhotels.com> (the "Domain Name") is registered with OnlineNic, Inc., of San Francisco, California, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2004. On January 22, 2004, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On January 29, 2004, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On February 10, 2004, the Center notified the Complainant that the Complaint was administratively deficient because the Respondent had not submitted in its registration agreement to the jurisdiction at the location of the principal office of OnlineNic, Inc. for court adjudication of disputes arising from the use of the domain name. On February 13, 2004, the Complainant filed an amendment to the Complaint of January 21, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 February 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2004.

The Center appointed Alfred Meijboom as the sole panelist in this matter on April 19, 2004. 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 language of the administrative proceedings is English.

4. Factual Background

The Complainant asserted and provided evidence in support of the following facts.

The Complainant is one of the world's largest groups in travel, tourism and corporate services, and owns about 4,000 hotels in 90 countries worldwide. The Complainant operates two hotels in the Russian Federation.

The Complainant is holder of many trademarks which include the word ACCOR and figurative trademarks which stylize the word ACCOR for goods and services related to, inter alia, hotels, restaurants and Internet services throughout the world, including:

- The word mark ACCOR (IR 742,032) of August 25, 2000, also registered in the Russian Federation;

- The word mark ACCOR (IR 537,520) of March 28, 1989, also registered in the Russian Federation;

- The word mark ACCOR (IR 480,492) of November 10, 1983;

- The device mark ACCOR (IR 687,060) of January 19, 1998, also registered in the Russian Federation;

- The device mark ACCOR (IR 616,274) of March 17, 1994;

- The device mark ACCOR (IR 727,696) of December 28, 1999, also registered in the Russian Federation.

Since April 30, 1998, the Complainant owns the domain name <accorhotels.com> and operates a website under this domain name as its official website.

The Respondent registered the Domain Name with OnlineNIC on August 23, 2002.

The Complainant stated that the Domain Name was being redirected to a website owned by the Complainant, but did not provide evidence thereof. When the Panelist checked the Domain Name, it appeared to be inactive and resulted into an error page. When the Panelist checked the Internet archive at URL "http://web.archive.org" he verified that the Domain Name was used to redirect to the aforementioned website of the Complainant.

The Respondent is not affiliated with the Complainant, nor has the Complainant authorized the Respondent to register and use the Domain Name.

Correspondence did not reach the Respondent because e-mails to the e-mail address of the Respondent's administrator according to the registrar's verification were undeliverable, as were letters to the Respondent's physical address provided to the registrar.

5. Parties' Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:

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

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

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

The Complainant makes the following assertions with respect to these elements:

(i) The Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights.

The mere suppression of a single letter "c" in the Domain Name <acorhotels.com> constitutes an attempt to "typosquatt" the domain name <accorhotels.com> of the Complainant, and is insufficient to avoid confusion.

The addition of the generic word "hotel" is insufficient to give any distinctiveness to <acorhotels.com>.

The addition even heightens the confusion since "hotel" is descriptive of the Complainant's goods and services marketed in relation to its trademarks.

As a result the Domain Name <acorhotels.com> is strictly identical to the Complainant's trademarks.

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

The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to seek the registration of any domain name incorporating the Complainant's trademarks.

The registration of several ACCOR trademarks and the domain name <accorhotels.com> by the Complainant preceded the registration of the Domain Name <acorhotels.com> for years.

The Respondent is not known under the name of "acor" or "acorhotels" or any similar term. It is unlikely that acorhotels, composed of a renowned trademark plus a word referring to its business, has a special meaning in Russian.

The Respondent is not making any legitimate non-commercial or fair use of the Domain Name, as there is no active website linked to the Domain Name other than that the Domain Name redirected to the official website owned by the Complainant without permission of the Complainant. Since the Domain Name <acorhotels.com> is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.

(iii) The Domain Name was registered and is being used in bad faith.

It seems obvious that the Respondent knew or must have known the ACCOR hotel chain at the time it registered the Domain Name <acorhotels.com>. The combination of the words "acor" and "hotel" clearly indicates the Respondent had the Complainant in mind while registering the Domain Name.

The Respondent apparently did not disclose true and correct information regarding its identity, since mail addressed to the Respondent was sent back with the notification of non-delivery, due to an unknown address.

The Respondent is using the Domain Name in bad faith. By trying to increase the traffic on his website using trademarks of the Complainant, it is taking unfair advantage of the reputation of these trademarks.

The redirection of the Domain Name is an act of bad faith, since the redirection interfers with the Complainant's ability to control the use of its own trademarks on the Internet. At some future time the Respondent could cause the domain name to resolve to Respondent's own or to a competing website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has several international trademark registrations for ACCOR registered for goods and services related to, inter alia, hotels, restaurants and Internet services, several of which are registered in the Russian Federation. The Panelist finds that the Complainant has rights in the ACCOR trademarks.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the ACCOR trademarks in which the Complainant has rights, the ".com" suffix is disregarded, it being a necessary component. The relevant part of the Domain Name is acorhotels. The term "acor" only differs one letter from the Complainant's ACCOR trademarks, and sounds and looks almost identical to the Complainant's ACCOR trademarks. Therefore, the Panelist considers acor and ACCOR to be similar. "Hotels" is a generic word, which is descriptive of the Complainant's goods and services for which the Complainant registered and uses its ACCOR trademarks. Therefore the Panelist is of the opinion that the addition of "hotels" does not reduce the likelihood of confusion. As a result the Domain Name, while not identical to the Complainant's ACCOR trademarks, is confusingly similar.

B. Rights or Legitimate Interests

The Complainant stated that it is not affiliated with the Respondent in any way and that it has not authorized the Respondent to register the Domain Name. At present the Respondent is not using the Domain Name, and the Panelist accepts that the Respondent redirected the Domain Name to the official website of the Complainant without authorization and without apparent reason for some period of time. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is composed of the distinctive term "acor", which is very similar to the ACCOR trademarks of the Complainant, and the generic term "hotel", which describes the Complainant's principal services marketed under the ACCOR trademarks. The Panelist considers that the ACCOR trademarks have a reputation or may even be well known for hotel-related goods and services, since the Complainant owns about 4,000 hotels in 90 countries worldwide. In accordance with ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625, the Panelist finds it is reasonable to conclude that only someone who was familiar with the ACCOR trademarks and what they distinguish could have registered the Domain Name. Therefore the Panelist finds that the Domain Name was registered in bad faith.

Complainant must also prove that the Respondent used the Domain Name in bad faith. In this respect the Complainant asserted that the Domain Name was redirected to a website owned by the Complainant. Although the Complainant has not provided evidence of this assertion, the Panelist could easily ascertain this allegation, so that the Panelist accepts that the Domain Name, before leading to an error page, redirected to the official website of the Complainant.

According to article 4(b) of the Policy an indication for use in bad faith is if the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website. When using the Domain Name the Respondent appears to have sought to take advantage of typographical errors which can be made when typing website addresses. The Respondent created a likelihood of confusion with the ACCOR trademarks. By redirecting Internet users to the official website of the Complainant the Respondent generated traffic to the site linked to the Domain Name, and may alter the link at his will as demonstrated by the fact that the Respondent stopped the redirection at a certain point of time. Linking the Domain Name to the website of the Complainant without authorization is commercial use of the Domain Name. Therefore the Panelist finds that the Respondent used the Domain Name in bad faith.

The Domain Name is currently inactive and entering the Domain Name results into an error page. In previous decisions Panelists have found that under certain circumstances non-use of a disputed domain name may nevertheless constitute use in bad faith under the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case the Domain Name has been used in bad faith before it became inactive. The Respondent failed to provide correct contact information in its registration agreement and thus concealed its true identity and whereabouts. This leads to the conclusion that the Respondent lacks good intentions with respect to the Domain Name and is not willing to account for the registration and use of the Domain Name. Taken these circumstances into account there is a serious risk that the Respondent will start using the Domain Name in bad faith again in the future. Therefore the Panelist finds that the Domain Name is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <acorhotels.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Dated: April 29, 2004