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ACCOR v. Accor International [2005] GENDND 1264 (29 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Accor International

Case No. D2005-0336

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, Paris, France.

The Respondent is Accor International, Delhi, India, represented by Rishi Dewan, New Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <accoronline.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2005. On April 1, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 1, 2005, Network Solutions, LLC 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. The Center verified that 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 May 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The deadline for filing the Response was extended by the Center until June 10, 2005 at the request of the Respondent. The Response was filed with the Center on June 10, 2005.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on July 5, 2005. 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 Panel issued a procedural order requesting the parties to submit additional evidence. Accordingly, the decision date was extended to August 2, 2005. Both parties submitted additional statements within the delays fixed.

4. Factual Background

The Complainant is a European leader and one of the world’s largest groups engaged in travel, tourism and corporate services. It owns about 4000 hotels in 90 countries worldwide. These hotels are operated under different brands, such as NOVOTEL, SOFITEL, CLUB MED, and also under ACCOR.

The Complainant is the owner of many trademark registrations for the trademark ACCOR, such as International registration No. 742032, dated August 25, 2000, for Internet transmission services, in class 38 of the international classification; International registration No. 537520, dated March 28, 1989, for products and services in classes 5, 8, 9, 11, 18, 21, 24, 25, 28 and 37; and International registration No. 480492, dated November 10, 1983, for products and services in classes 16, 36, 39, 41 and 42 (hotels and restaurant services).

The Complainant also has a website at “www.accor.com”, in order to allow users a quick and easy way to find and book its hotels.

The Respondent registered, on October 1, 2004, the domain name <accoronline.com>. The domain name directs to a website “under construction”.

Having discovered the registration of the domain name <accoronline.com>, the Complainant, on January 14, 2005, sent a warning letter to the Respondent, and a reminder by email on February 15, 2005. The Respondent did not reply to these communications.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <accoronline.com> is identical or confusingly similar to its trademark ACCOR in which it has rights; and (B) the Respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submits that (A) the domain name is not confusingly similar to the Complainant’s mark, because it is active in a business that is totally different from the business of the Complainant; that (B) it has legitimate rights and interests in using the domain name, which is part of its trade name, and that (C) it did not register and is not using the domain name in bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <accoronline.com> consists of the word “accor”, identical to the trademark ACCOR of the Complainant, and the generic term “online” (the gtld .com cannot be taken into consideration, when judging confusing similarity). Internet users are accustomed to combinations of trademarks with terms such as “online” suggesting that the business of the registrant uses the Internet as a sales channel. Users seeking the website of the Complainant, e.g. in order to book a hotel, and typing the term “accoronline” will therefore expect to arrive at this website and will be confused when reading that this site is under construction. General rules of trademark law, according to which trademarks can only be confusingly similar, when used for similar goods or services, cannot simply be applied to the use of domain names on the Internet. The Complainant therefore rightly cited a number of panel decisions in which the generic term “online” was not considered to exclude confusing similarity.

In conclusion, there is no doubt that the domain name <accoronline.com> is confusingly similar to the trademark ACCOR of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not been authorized by the Complainant to use its trademark ACCOR. However, the Respondent trades under the name Accor International. Even if it did not submit evidence of incorporation or registration of a company under that name, there can be no doubt that the Respondent has in fact been trading under that name at least since April/May 2004. The Respondent has submitted abundant evidence for that fact. Not only has it submitted a certificate of Importer-Exporter Code, issued by the Ministry of Commerce, a certificate of registration with the Sales Tax Office in Delhi, India and a letter of the Commissioner of Income Tax, New Delhi, India, it also submitted a great number of copies of invoices from manufacturing companies from different companies in different countries in Europe and in Asia, which were all sent to the Respondent using its official address, including the trade name “Accor International”. The Panel accepts these invoices together with the above mentioned registration certificates as proof that the Respondent is trading under the name Accor International and is exercising a real business in the field of import and export of products, mainly in the field of chemicals, iron and steel, under that name.

The Respondent cannot derive a right to use the domain name under dispute from the use of its trade name “Accor International”, because it does not use this trade name as domain name or as a part of the domain name in dispute. However there are at least good reasons for the Respondent to claim a legitimate interest in using the main distinctive part “accor” of its trade name in order to create a domain name. It is therefore doubtful whether the Complainant has been able to submit convincing proof for its assumption that the Respondent has no rights and no legitimate interests in using the domain name <accoronline.com>. However, the Panel need not arrive at a final conclusion whether the conditions of paragraph 4(a)(ii) of the Policy are fulfilled, since the Complainant has failed to prove that the Respondent registered and is using the domain name <accoronline.com> in bad faith.

C. Registered and Used in Bad Faith

In order to succeed with its Complaint, the Complainant must prove that the Respondent registered and is using the domain name in bad faith.

1. Registration in bad faith

The Complainant considers it to be obvious that the Respondent knew or must have known Accor’s hotel chain at the time it registered the domain name. At first glance, it is indeed difficult to imagine that the Respondent was not aware of the existence of the Complainant and its trademark ACCOR when registering that word combined with the generic term “online”. However, the Respondent is using the name “accor” as part of its business name, and it submitted evidence that it was offered the domain name <accoronline.com> by Rediff Business Solutions (Rediff.co.in), Mumbai, India, who acts as technical and billing contact of the Respondent, and still in May 2005 offered to the Respondent more domain name registrations for the name “accoronline” in the “.in” ccTLD as available domain names. In that context, it must also be considered that the Complainant apparently is not actively involved in the hotel business in India, at least not under the name ACCOR (the Complainant did not submit any evidence of registration and/or use of its trademark ACCOR in India, and when the Panel attempted to search for hotels in India or Delhi on the Complainant’s website, no hotels were indicated for India). Under the circumstances, it is therefore not obvious that the Respondent knew the Complainant’s trademark ACCOR, when registering the domain name <accoronline.com> or even when establishing its business under the trade name Accor International. The very fact that the Respondent bought the domain name <accoronline.com> from its technical and billing contact is therefore not sufficient to prove bad faith of the Respondent at the time of registration of the domain name.

2. Use in bad faith.

In that context, the Complainant refers to the fact that, since registration of the domain name on October 1, 2004, the website to which the domain name directs is “under construction”. As in the Telstra case, referred to by the Complainant (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), this is indeed an element to be considered in the evaluation of the question of bad faith. However, this fact alone is not sufficient proof of registration and use in bad faith. There must be other elements indicating bad faith in order to consider inactivity as use in bad faith, such as having no business at all related to the domain name or hiding the identity. Such elements are not given in the present case. The Respondent does not hide its identity and it trades under a name that contains the main distinctive part of the domain name, combined with the descriptive term “International”. Also, the fact that the Respondent did not reply to the warning letter of the Complainant, is not sufficient evidence of bad faith in view of the following facts:

The Respondent, in its additional submission requested by the Panel, submitted evidence that on November 5, 2004, it had already appointed a company as its website designer whose main task was to develop a website for the domain name <accoronline.com>. This letter contained detailed instructions for the web designer as to the contents of the website, relating to the Respondent’s business in the field of chemicals, iron and steel. The Respondent submitted copies of two further letters addressed to its web designer dated January 18, 2005 and April 14, 2005. This shows that the Respondent did not simply stock the domain name. It undertook efforts to have a website designed for the purposes of its business. Due to special circumstances (amongst others more recently a prolonged business trip of the Respondent’s managing partner) it apparently failed, to date, to have this website designed.

Furthermore, the Respondent, represented by its Counsel, in the additional submission dated July 23, 2005, made the following statement:

“5. The Respondent further hereby undertakes that, if the Complainant desires, it shall be boldly displayed in the website <accoronline.com> that the Respondent has no concern at all with the Complainant”.

The Respondent is therefore prepared to use a suitable disclaimer on its website which will exclude confusion of users, who are expecting to arrive at a website of the Complainant, with the business and the website of the Complainant. In the absence of strong evidence of registration and use in bad faith by the Respondent, the Panel accepts this undertaking, which corresponds to the solution proposed by the WIPO Joint Recommendation on the Use of Signs on the Internet in the case of conflicting signs that are based on rights or legitimate interests in different countries, as an additional element in favor of the Respondent.

Taking all these elements together, the Complainant failed to prove that the Respondent registered and is using the domain name <accoronline.com> in bad faith.

Insofar as the Complainant submits trademark dilution and tarnishment by the Respondent, the Policy was not designed to address such matters and they would be better addressed in a court.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Gerd F. Kunze
Sole Panelist

Date: July 29, 2005