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ACCOR v. ACCOR Tours [2005] GENDND 22 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. ACCOR Tours

Case No. D2004-1001

1. The Parties

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

The Respondent is Accor Tours of Kathmandu, Nepal.

2. The Domain Name and Registrar

The disputed domain name is <accortours.com> (hereinafter, the “Domain Name”) and it is registered with eNom, Inc. (hereinafter, “eNom”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter, the “Center”) on November 26, 2004. On November 29, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On November 29, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the Domain Name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the Domain Name was registered with eNom, and that Respondent, Accor Tours, was the current registrant of the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 proceeding commenced on December 7, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2004.

The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on January 13, 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 Complainant is a French company that owns and manages a world-wide network of hotels and restaurants, being one of the leading global players in that sector. At present, the Complainant operates more than 4,000 hotels and restaurants under different brands such as Sofitel, Mercure, Novotel, Ibis, Formule 1, Red Roof Inns or Motel 6.

The Complainant controls a group of subsidiary-companies that manage its businesses at an international level. Among said companies, a French company named Accor Vacances was formerly named Accor Tour, being specifically dedicated to providing travel-organization services.

For the development of its activities, the Complainant owns and uses an important number of trademarks based on the name “Accor”. Among others, the Complainant is the owner of the following trademarks:

- International trademark ACCOR no. 480492, filed on November 10, 1983, and covering goods and services under International classes 16, 39 and 42;

- International trademark ACCOR no. 492152, filed on March 27, 1985, and covering goods and services under International classes 16, 36, 38 and 42;

- International trademark ACCOR no. 687060, filed on January 19, 1998, and covering services under International classes 16, 36, 39, 41 and 42.

The Complainant also owns the following domain names based on the name “Accor”:

- <accor.com>, registered on February 23, 1998;

- <accor.net>, registered on April 1, 2001;

- <accor.fr>, registered on March 27, 1997.

In addition, the Complainant owns the French trademark ACCOR TOUR, no. 3080456, filed on February 2, 2001, and covering services under International classes 39 and 42. Moreover, the Complainant has registered and uses the following domain names based on its trademark ACCOR TOUR:

- <accortour.com>, registered on November 16, 2002;

- <accortour.biz> registered on November 16, 2002;

- <accortour.fr> registered on March 27, 1997.

The Domain Name was registered by the Respondent on September 26, 2004, and it has been inactive ever since.

In accordance with the information provided by the WHOIS database, the Respondent seems to be a Nepal company called Accor Tours, located in Kathmandu; its administrative contact, a person named Shreehari Thapalia.

No further information on the Respondent has been provided to the Panel, as the Respondent has neither responded to the Complaint nor has it filed any kind of document before the Panel during this proceeding. By making a simple search on the Internet introducing the data relating to the Respondent as shown in the Whois database, the Panel did not find any reference to a Nepal company named Accor Tours. The only reference found in this respect was that Mr. Thapalia seems to be the representative of a company named Trekking Team before the Trekking Agents Association of Nepal, according to the information provided by said association on its website (located at “www.nepaltrekkingagents.com/t13.htm”). The address of Trekking Team posted at that website is the same as the one corresponding to Accor Tours (as shown in the Whois database in connection with the Domain Name). The activities of Trekking Team are focused on the provision of a wide range of mountain-tourism services.

On November 2, 2004, the Complainant sent the Respondent a cease-and-desist letter by e-mail. In that letter, the Complainant informed the Respondent about the existence of its ACCOR TOUR and ACCOR trademarks, urging it to transfer the Domain Name as its registration and use constituted a breach of the Complainant’s rights. The Respondent did not reply in any manner to the above-mentioned letter from the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends in the Complaint that:

- The Domain Name is confusingly similar to the ACCOR TOUR and ACCOR trademarks in which it has rights, as the only difference among them is the inclusion of the letter “s” in the word “Tours” included within the Domain Name;

- The Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant states that the Respondent is not known under the name “Accor Tours” or any similar term. Moreover, a fair and legitimate non-commercial use is not made since the Domain Name is not active;

- The Respondent was aware of the Complainant’s trademarks, as they are well-known due to the extensive international use of them made by the Complainant. Moreover, the Complainant forwarded the Respondent a letter expressly indicating that the registration and use of the Domain Name breached its rights in the ACCOR TOUR and ACCOR trademarks, without receiving an answer from the Respondent;

- The Respondent registered and uses the Domain in bad faith. Moreover, after having tried to contact the Respondent by means of the information included in the Whois database, the Complainant has been able to verify that such information was not correct.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel the following three circumstances in order to obtain the transfer of the Domain Name:

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

(B) that the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the concurrence or not of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

According to the Policy, the first circumstance that must be proven is that the Domain Name may be considered identical or confusingly similar to the ACCOR TOUR and ACCOR trademarks in which the Complainant holds rights.

A comparison of the Domain Name to the Complainant’s trademarks shows two main differences between them:

- <accortours.com> is composed of the mark “Accor” combined with the generic term “tours”.

- The Domain Name includes the “.com” suffix.

With regard to the first difference, the Panel considers that the Domain Name clearly relates to the Complainant’s ACCOR TOUR trademark, as the addition of the letter “s” does not change the overall impression of connection with said trademark. Indeed, an average Internet-user is quite likely to confuse the ACCOR TOUR trademark with the Domain Name, as other decisions have pointed-out regarding similar situations (see, for example, Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Microsof.com a.k.a. Tarek Ahmed, WIPO Case No. D2000-0548; or Staple,s Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc v. Staple.com, WIPO Case No. D2003-1028).

Moreover, in the Domain Name the generic term “tours” is just a complement to the Complainant’s ACCOR mark. As stated above, the Complainant’s main activities are apparently connected with the tourism sector. Consequently, the inclusion of the word “tours” clearly relates to the Complainant and its activities, specially taking into account the fact that the word “accor” has no meaning in English or French. Thus, the Domain Name could lead the Internet users to confusion (at least at a first glance). This approach has been applied in many decisions adopted under the Policy such as, for example Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More , WIPO Case No. D2000-0006 and Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363.

The second of the above-mentioned differences between the ACCOR TOUR and ACCOR trademarks and the Domain Name is the inclusion of the “.com” suffix in the latter. Such an inclusion is due to the current technical specificities of the Domain Name System (DNS). Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant’s trademarks (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc.., WIPO Case No. D2003-0172).

As a consequence of what has been stated, the Panel considers that the Domain Name is confusingly similar to the ACCOR TOUR and ACCOR trademarks owned by the Complainant. Therefore, the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark rights had been acquired; or

- To make a legitimate non-commercial 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.

In the present case, none of the above-mentioned circumstances seems to apply. Indeed, the Respondent has not been authorized by the Complainant to use its ACCOR TOUR or ACCOR trademarks, nor has it filed any document proving that it is commonly known by the Domain Name and/or that it has made demonstrable preparations for a bona fide use of the Domain Name. In this respect, it is important to outline the fact that the lack of action by the Respondent in this proceeding, combined with the lack of use of the Domain Name since its registration, seems to prove the Respondent’s clear absence of rights or legitimate interests in the Domain Name. Many decisions adopted under the Policy (see, for example, Adventis Pharmaceuticals Products Inc. v. Nejat, WIPO Case No. D2003-0401; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; or Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723) have considered that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other aimed at providing evidence of its rights or legitimate interests in the Domain Name. The Panel considers that this approach is fully applicable to the present case. Indeed, the Respondent has not refuted any of the evidence provided by the Complainant vis-à-vis its lack of rights or legitimate interests in the Domain Name.

It is also important to note that, as indicated in the factual background, the Respondent (by means of its administrative contact) seems to provide tourism-related services. Therefore, it is quite unlikely that a “coincidence” has occured in this case. On the contrary, it seems that the Respondent, due to its activities in the tourism sector, could be well aware of the existence of the Complainant (which is a world-wide tourism group) as well as of its ACCOR and ACCOR TOUR trademarks. Accordingly, it is most probable that the Respondent did not register the Domain Name for a legitimate or fair purpose. Once again, the lack of response from the Respondent prevents this Panel from adopting another approach, as it has not been provided with any reasonable alternative argument.

Consequently, the Panel considers that the Respondent does not hold rights or legitimate interests in the Domain Name and that the second condition foreseen by the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by paragraph 4(a) of the Policy is that the Complainant prove that the Respondent has registered and uses the Domain Name in bad faith.

In this regard, it is important to remember that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example). Consequently, the Complainant must clearly show that: (i) the Domain Name was registered by the Respondent in bad faith and, (ii) the Domain Name has been used by the Respondent in bad faith.

Further, the eventual concurrence of said circumstances in the present case shall be analyzed.

i. Registration of the Domain Name in bad faith

First of all, the Complainant must prove that, at the moment of registering the Domain Name, the Respondent was guided by bad faith purposes.

As stated above, the Domain Name is based on the combination of the words “accor” and “tours”. Taking into account the fact that “accor” does not mean anything in English or French and that the word “tours” seems to be explicitly related to the tourism sector (where the Complainant is a key-player), the Panel is unable to see how the Respondent could have registered the Domain Name in good faith.

The Panel is not aware of the individual and combined meaning of the above-mentioned words in the Nepali language or any other language the Respondent could have used in connection with the Domain Name. Nevertheless, as previously indicated, the Respondent has decided not to file any argument before the Panel in order to prove its good faith and has not denied a single allegation made against it by the Complainant in connection with the registration of the Domain Name.

Given the above-mentioned circumstances, the only feasible possibility in this case seems to be that the Respondent registered the Domain Name in order to unfairly breach the Complainant’s rights in the ACCOR TOUR and ACCOR trademarks. Moreover, such behavior constitutes a breach of Clause “Representations and Warranties” of eNom’s registration agreement, which expressly requires the registrant to warrant that registration and use of the corresponding domain name does not infringe third parties’ rights. Consequently, the Panel must consider that the Respondent registered the Domain Name in bad faith.

ii. Use of the Domain Name in bad faith

The Complainant considers that the Respondent’s “passive use” of the Domain Name may be deemed as a bad faith behaviour as foreseen by the Policy.

As previously stated, the website linked to the Domain Name has been inactive since registration of the Domain Name by the Respondent.

Such a “passive use” must be considered as an infringement of the above-mentioned paragraph if the circumstances applying to this case are taken into account. Indeed, if the Panel adopts a factual approach to the Respondent’s behaviour (similar to the one applied in many decisions adopted under the Policy, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 or eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633; or Comerica, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615), it is quite clear that the “passive use” of the Respondent must be considered “bad faith” as considered by the Policy.

In order to reach such a conclusion, the following facts must be taken into account:

- There is no evidence of actual or intended use in good faith of the Domain Name by the Respondent, as the Respondent has not used the Domain Name since its registration. As a consequence of such a lack of use (and of the Respondent’s intention of not explaining the reason for its behavior), the Complainant has been prevented from reflecting its ACCOR and ACCOR TOURS trademarks in a corresponding domain name, unfairly suffering the damages derived thereof; and

- The Respondent did apparently use false information when registering the Domain Name. Thus, it seems that Respondent was aiming to avoid the inclusion of real information in the Whois database, so it could not be clearly identified. As stated in many decisions (see above), such behaviour constitutes clear evidence of bad faith in the sense of the Policy. Likewise, the use of false contact information also constitutes a breach of Clause “Account Contact Information and Domain Name Whois Information” in eNom’s registration agreement; and

- The Respondent has not filed a response to the Complaint during this proceeding. In consequence, the Respondent has not provided the Panel with any element or evidence of good faith in regards to the registration and use of the Domain Name and has not shown any interest in doing so.

Taking into account the above-mentioned arguments, the Panel concludes that the evidence shown by the Complainant regarding the Respondent’s passive holding of the Domain Name satisfies the requirements foreseen by the Policy. Consequently, the Panel considers that the Complainant has proved that the Respondent registered and uses the Domain Name 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 <accortours.com> be transferred to the Complainant.

Albert Agustinoy Guilayn
Sole Panelist

Dated: January 27, 2005