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Microsoft Corporation v. Cedric Thompson [2005] GENDND 322 (14 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Nick Chammbers

Case No. D2005-0012

1. The Parties

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

Respondent is Nick Chammbers, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <accorehotels.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2005. On the same date, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification. A verification response was received the same day, confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.

Complainant filed an amendment to the Complaint on January 17, 2005. 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February  6, 2005. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s Default on February 10, 2005.

The Center appointed Henry Olsson as the sole panelist in this matter on February 22, 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.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that it the subject of the Complaint, to the jurisdiction of the courts at the location of the domain name holder’s address as shown for the registration of the domain name in the concerned Registrar’s Whois database at the time of the submission of the Complaint to the Center.

4. Factual Background

Complainant ACCOR is one of the world’s largest groups in the field of travel, tourism and corporate services. It owns around 4000 hotels in 90 countries all over the world, including the United States and the State of California. It communicates using the Internet and owns the websites “www.accorhotels.com” and “www.accorhotel.com” mainly to provide users with a quick and easy way of finding the hotels and making booking.

Complainant is also the owner of a number of trademark rights throughout the world, including “ACCOR,” “ACCOR CASINOS” and ACCOR + logo for a number of different products and services. Complainant has submitted documentary evidence about those registrations.

5. Parties’ Contentions

A. Complainant

Initial remarks

Complainant first submits that it had become aware that the domain name at issue had been registered and was linked to a webpage to which access was forbidden. Complainant sent, by registered mail, a warning letter, dated November 12, 2004, to Respondent, and repeated that warning in an e-mail; Respondent was asked to agree to transmit the domain name at issue. A reminder was sent by e-mail on December 2, 2004. Copies/printouts of this letter and these e-mails have been submitted. Complainant states that it never received any reply from Respondent.

Identity or confusing similarity

In this respect, Complainant contends that the domain name at issue is “strictly identical” to the numerous trademarks registered by Complainant.

Complainant refers to certain earlier decisions and submits that the addition of the domain name indication (“.com”) would not be taken into consideration when examining the identity or similarity between the earlier mark and the domain name at issue.

Complainant also states that the mere addition of a single letter, namely “e”, is not sufficient to avoid confusion, as held in earlier UDRP decisions to which Complainant makes reference; according to Complainant the domain name constitutes an obvious attempt to “typosquat” the Complainant’s trademarks and domain names.

Finally, Complainant contends that the word “hotel” is a generic word that describes the main business of Complainant and that such additions of generic words is insufficient to give any distinctiveness to the domain name at dispute. Also, the risk for confusion is increased when the generic word added by Respondent is descriptive of Complainant’s goods and services in relation to the trademark, which is the case here. Complainant refers, in this respect, to an earlier UDRP decision, ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625.

In summary, Complainant contends under this heading that it is established that Complainant has trademark rights in the name that is reproduced in its entirety in the domain name at issue and that therefore the condition in Paragraph 4(a)(i) of the Policy is fulfilled.

Rights or legitimate interests in the domain name at issue

Complainant first contends in this respect that Respondent is not affiliated with Complainant in any way, and that Complainant has not authorized Respondent to use and register its trademarks or to seek the registration of any domain name incorporating the mark.

Furthermore, according to Complainant, Respondent has no prior rights or legitimate interests in the domain name, and the registration of several ACCOR trademarks preceded the registration of the domain name at issue. More particularly, the domain name <accorhotels.com> was registered for Complainant in 1998.

Also, Complainant states that Respondent is not known under the name “accore” or “accorehotels” or any similar term. It is, according to Complainant, unlikely that the term “accorehotels” composed of a renowned trademark plus a word referring to its business, may have a special meaning in English.

Complainant adds that Respondent is not making any legitimate non-commercial or fair use of the domain name, and there is no active website linked to the domain name.

Finally, Complainant stresses that, since the domain name at issue is so identical to Complainant’s famous trademarks, Respondent could not reasonably pretend that it was intending to develop a legitimate activity.

In conclusion, according to Complainant, it is undoubtedly established that Respondent has no rights or legitimate interests in the domain name at issue in terms of Paragraph 4(a)(ii) of the Policy.

Registration and use in bad faith

As regards first registration in bad faith, Complainant contends that it seems obvious that Respondent knew or must have known about the ACCOR hotel chain at the time of the registration of the domain name. Also, it would be difficult to sustain that Respondent was unaware of the existence of Complainant when it registered the domain name at issue containing the combination of “accore” and “hotels”; Respondent must have had Complainant in mind at the time of the registration. Apparently, Respondent did register the domain name at issue only to disrupt the business of Complainant, as Respondent did not exploit the domain name that it had registered.

Complainant adds that, by registering a domain name corresponding to a famous name of which Respondent must have been aware, Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood for confusion with Complainant’s marks. This conduct constitutes, in the view of Complainant, evidence of use in bad faith. Respondent is trying to profit from the reputation of Complainant’s trademarks by increasing the traffic on its website thanks to the mere reproduction of somebody else’s trademark, something that constitutes obviously a bad faith use of the domain name at issue. Complainant refers in this context to an earlier UDRP decision, The Nasdaq Stock Market, Inc. v. Viludala Prasas, WIPO Case No. D2001-1493.

Complainant adds that it has been found in earlier decisions to which Complainant makes reference, that non-use of a disputed domain name may constitute bad faith use under the Policy.

In summary, in the view of Complainant it is established that Respondent did both register and use the domain name at issue in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent did not reply to the Complainant’s contentions and is thus in default.

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable

In the case of default by a Party, Rule 14 prescribes that, if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant has been contested, despite the opportunity given to do so. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support these contentions.

The verification response submitted by the Registrar indicates that the Policy applies to the domain name registration at issue. Respondent is consequently obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name.

The Panel notes that documents available, in particular the information about e-mail communications sent, show that the Complaint has been communicated to Respondent and that there is, from this point of view, no obstacle to considering the case.

Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights; and

- that Respondent has no rights or legitimate interests in the domain name; and

- that the domain name has been registered and is being used in bad faith.

In the following parts of this decision, the Panel discusses each of those elements.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue is <accorehotels.com>.

From the submission by Complainant, supported by documentary evidence, follows that Complainant has registered a number of trademark rights in the word mark ACCOR alone or with additions but still with the word ACCOR” as dominant. The Panel also notes that Complainant operates around 4000 hotels worldwide, including in the United States and the State of California, location of Respondent. Furthermore, the Panel notes that Complainant owns and operates websites under the domain names <accorhotels.com> and <accorhotel.com>.

The domain name at issue contains the distinctive trademark ACCOR in a slightly misspelled form and with the addition of the notion “hotel”. In the view of the Panel, any Internet user accessing the domain name at issue would do so in the belief that he or she accesses the website of Complainant. The character of the misspellning – the addition of the letter “e” - is not such as to remove the impression of a clear connection with Complainant. The addition of the word “hotel” rather increases the impression of such a connection, because Complainant’s fame is linked to the hotel business. The Panel also considers that the addition of the notion “.com” is not such as to remove the impression of similarity with Complainant’s trademark.

On the basis of these considerations, the Panel concludes that there exists a confusing similarity between the domain name at issue and the trademark in which Complainant has rights.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.

In this context, Complainant has made a certain number of contentions that Respondent has not objected to. Therefore, the Panel accepts Complainant’s contention that Respondent is not affiliated to Complainant and has no other connection with Complainant, nor any prior rights or legitimate interests in the domain name at issue. The Panel also accepts that Respondent is not known under the name “accore” or “accorehotels” or any similar term. Also, Complainant has contended – and Respondent has not denied this – that 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 at issue.

These circumstances lead the Panel to conclude that Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy then sets out some circumstances that, in particular, but without limitation, shall, if found to be present, be considered as evidence of registration and use in bad faith.

Also as concerns these elements, the Panel has no indication about Respondent’s position but has to base its considerations on Complainant’s contentions and what is submitted to support those contentions.

As regards first registration in bad faith, the Panel notes that Complainant has registered trademark rights in the notion “ACCOR” which are valid also in the United States, including the State of California, and also operates hotels there. The Panel considers it unlikely that Respondent did not know about the existence of Complainant and its hotel business at the time of the registration of the domain name at issue. To nevertheless register that domain name constitutes, in the view of the Panel, evidence of registration in bad faith under the Policy.

As regards the use in bad faith, the Panel first notes that Respondent does not seem to have exploited the domain name, as no website seems to be linked to it. The impression must therefore, inevitably, be that the domain name was registered either in order to disrupt the business of Complainant or that the future intention is to attract, for commercial gain, users of the Internet by creating a likelihood of confusion with Complainant’s trademark so as to increase the website traffic.

As Complainant notes, it has been established in previous UDRP decisions by the Panels that the non-use of a domain name constitutes use in bad faith under the Policy.

The circumstances thus present in this case lead the Panel to the conclusion that it is established that the domain name at issue was not only registered but also used in bad faith under the terms of the Policy

Conclusions

On the basis of these considerations, the Panel considers it to be established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and used in bad faith.

Consequently, Complainant’s request for a transfer of the domain name shall be approved.

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 <accorehotels.com> shall be transferred to Complainant.

Henry Olsson
Sole Panelist

Dated: February 24, 2005