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Accor v. Howell Edwin [2005] GENDND 1923 (22 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Howell Edwin

Case No. D2005-0980

1. The Parties

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

The Respondent is Howell Edwin, Houston, Texas , United States of America.

2. The Domain Name and Registrar

The disputed domain name <accor-corp.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 13, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 14, 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 October 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2005.

The Center appointed Nicoletta Colombo as the Sole Panelist in this matter on November 9, 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.

4. Factual Background

The following uncontested facts are found by the Panel and established as true.

Accor is one of the world’s largest groups in travel, tourism and corporate services and owns about 4,000 hotels in 90 countries. The Complainant owns the following trademarks:

- International trademark “ACCOR”, n° 742032, filed on August 25, 2000, and covering products and services in class 38 (Internet specification);

- International trademark “ACCOR + logo” N° 492152, filed on March 27, 1985, renewed and covering products and services in classes 16, 36, 38 and 42;

- International trademark “ACCOR” n° 480492, filed on November 10, 1983, and covering products and services in classes 16, 39 and 42 (hotels and restaurants services);

- International trademark “ACCOR + logo” N° 687060, filed on January 19, 1998, and covering products and services in classes 16, 36, 39, 41 and 42 (hotels and restaurants services);

- International trademark “ACCOR CASINOS + logo” N° 756453, filed on March 20, 2001, and covering products and services in classes 16, 41 and 42 (hotels and restaurants services);

- International trademark “ACCOR + logo” N° 727696, filed on December 28, 1999, and covering products and services in classes 16, 39, and 42 (hotels and restaurants services);

- American trademark “ACCOR” N° 2838984, filed on May 4, 2004, and covering products and services in classes 38, 39 and 42 (hotels and restaurants services);

- American trademark “ACCOR + logo” N° 2532400, filed on January 22, 2002, and covering products and services in classes 39 and 42 (hotels and restaurants services);

- American trademark “ACCORTEL + logo” N° 2392736, filed on October 10, 2000, and covering products and services in classes 38, 39 and 42 (hotels and restaurants services).

The disputed domain name <accor-corp.com> is registered in the name of the Respondent on May 19, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.

In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name in dispute is simply identical or confusingly similar to the ACCOR trademarks. It is irrelevant that the Respondent has added the abbreviation of the word corporation “corp” which is a generic term that describes the entity of the Complainant, because the confusion between the trademark and the domain name is not alleviated.

According to numerous WIPO UDRP decisions, the addition of a generic word is insufficient to give any distinctiveness and the confusion is heightened when the added generic word is descriptive of the Complainant’s goods and services marked in relation to the trademark.

In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain name. The Complainant has never authorized the Respondent to use or register its trademarks, or to seek the registration of any domain names incorporating its trademarks.

The Complainant states that the Respondent has not been known for any activity performed in any known business segment by the use of the contested domain name.

In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.

The Respondent at the time of the registration of the contested domain name was surely aware of the trademarks of the Complainant taking into consideration that Accor owns in USA alone (where the registrar is localized) three trademarks, filed respectively on 2000, 2002 and 2004 and owns 1.260 hotels (see Annex 13 and 14).

The Complainant requests the Panel to transfer the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of several ACCOR trademarks which are not exactly identical to the domain name in dispute. The only difference between the disputed domain name and the trademarks of the Complainant is the addition of the abbreviation of the word corporation “corp”. The addition of the word “corp” (which is a generic term that describes the entity of the Complainant) does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant’s trademarks.

There are several WIPO UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word (see i.e., Société del Hotels Méridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201; Accor, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

The addition of the generic top level domain extension “.com” does not eliminate the confusion.

There is no doubt that the domain name <accor-corp.com> is confusingly similar to the trademarks of the Complainant. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this case. There is prima facie indication in the case file that there are no rights or legitimate interests on the part of the Respondent in the domain name, see paragraph 4(c) of the Policy.

Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or service marks or to apply for or to use the domain name incorporating the said marks.

Under these circumstances, the Panel finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the disputed domain name in bad faith.

As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the contested domain name (which corresponds to a well known trademark with the addition of a generic word like “corp” which is the abbreviation of the word “corporation”) most probably with knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s marks would have registered the identical domain name.

Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registration has been made in bad faith.

The Panel finds that even if the domain name <accor-corp.com> does not resolve to a website or other on-line presence, the Respondent is using it in bad faith. According to several WIPO UDRP decisions “passive holding” of a domain name constitutes use in bad faith (Ladbroke Group plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Jupiter Limited v. Aaaron Hall, WIPO Case No. D2000-0574; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Moreover there is no information as to the business activities of the Respondent that justifies the use of the contested domain name neither any rights or legitimate interest in said domain name by the Respondent.

Taking into account all of the above, this Panel believes that the Complainant has satisfied the third element of the Policy in demonstrating bad faith registration and use of the domain name.

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, <accor-corp.com>, be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist

Dated: November 22, 2005