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ACCOR v. J Lee [2005] GENDND 390 (11 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. J Lee

Case No. D2005-0137

1. The Parties

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

The Respondent is J Lee, Kowloon, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <accorhoteles.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 8, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On February 9, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2005.

The Center appointed Michel N. Bertschy as the sole panelist in this matter on April 27, 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 language of these administrative proceedings is English, being the language of the registration agreement.

4. Factual Background

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

The group operates websites at “www.accorhotels.com” and “www.accorhotel.com” providing information and customer services, such as online hotel and air travel reservation services (Exhibit 3). Moreover, among the trademarks owned by the Complainant, the following International registrations are asserted for the purpose of these proceedings: ACCOR, no. 742032, registered on August 25, 2000, covering products and services in class 38 (Internet specification); ACCOR, no. 537520, registered on March 28, 1989, covering products and services in classes 5, 8, 9, 18, 21, 25, 28, and 37; ACCOR, no. 480492, registered on November 10, 1983, covering products and services in classes 16, 39 and 42; ACCOR, no. 616274, registered on March 17, 1994, covering products and services in classes 16, 38, 39 and 42; ACCOR, n° 727696, registered on December 28, 1999, covering products and services in classes 16, 39 and 42 (Exhibit 6).

The disputed domain name was originally registered by Alvaro Collazo on October 18, 2004 (Exhibit 1). The Complainant discovered this fact and instructed attorneys to act accordingly. The Complainant’s attorneys sent a registered letter and an e-mail to Alvaro Collazo requiring him to transfer the domain name. Having received no reply, an additional e-mail was sent on December 2, 2004, to no avail (Exhibit 5).

The disputed domain name was subsequently transferred to the Respondent on December 5, 2004, (Exhibit 1). It is linked to a search engine proposing links to travel and hotel websites, such as “Dominican republic hotels”, “Hôtel à prix promos”, UK & Int Hotels Bookings” (Exhibit 3).

5. Parties’ Contentions

A. Complainant

The Complainant first asserts that the disputed domain name is confusingly similar and practically identical to the trademarks it has registered. The conditions set out in paragraphs 4(a)(i) of the Policy and 3(b)(viii), (b)(ix)(1) of the Rules, are therefore met for the following reasons:

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel decided that the gTLD extension “.com” was not to be taken into consideration when examining the identity or similarity between trademarks and domain names. Moreover, in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, the panel held that the mere addition of the single letter “e” was an obvious attempt to “typosquat” the disputed domain name and was insufficient to avoid confusion. Furthermore, the decision in ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, rests on the recognition by numerous UDRP panels that the adjunction of generic words such as “hotel” was insufficient to give any distinctiveness to the disputed domain name. In fact, confusion is heightened when such words relate to the Complainant’s goods or services.

The Complainant contends secondly that the Respondent has no rights or legitimate interests in respect of the domain name. The conditions set forth in paragraphs 4(a)(ii) of the Policy and 3(b)(ix)(2) of the Rules are therefore also met.

The Respondent is not affiliated with the Complainant and has never sought or obtained consent to register the domain name. The Respondent is not a licensee nor otherwise permitted to use the Complainant’s trademarks. Finally, the Respondent does not use the domain name as part of its legal name.

Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith pursuant to paragraphs 4(a)(iii), 4(b) of the Policy and 3(b) (ix)(3) of the Rules.

According to the Complainant, the Respondent knew or was aware of the existence of the Accor group when it registered the domain name, since the combination of the words “accor” and “hoteles” clearly indicates that the Respondent had the Complainant in mind when registering the domain name in dispute. Moreover, the Respondent apparently registered the domain name in dispute to disrupt the Complainant’s business, since it operates the website “www. accorhoteles.com” with sponsored links to travel and hotel websites.

The Complainant also finds evidence of use of the domain name in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. Such misconduct has been held as evidence of bad faith in past decisions such as The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493.

As further evidence of bad faith, the Complainant refers to the fact that the original registrant has been involved – as respondent – in a number of UDRP cases involving cybersquatting: Expedia, Inc v. Alvaro Collazo, WIPO Case No. D2003-0716; TV Globo Ltda. v. Alvaro Collazo, WIPO Case No. D2003-1013; Bank of America Corporation v. Alvaro Collazo, National Arbitration Forum (NAF) Claim number FA248681; The Neiman Marcus Group, Inc. v. Alvaro Collazo, NAF Claim number FA248954; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417.

B. Respondent

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

6. Discussion and Findings

I. Preliminary issue

The Respondent is not the person who initially registered the domain name in dispute. He is, however, currently operating the website. Although the Complainant has not addressed the issues related to whether Alvaro Collazo and/or the Respondent should be considered as Respondents pursuant to paragraph 4 of the Rules, or to whether representations related to third parties are relevant for examining the merits of a Complaint, such issues will be examined by the Panel.

The disputed domain name was originally registered by Alvaro Collazo on October 18, 2004. The Complainant’s attorneys sent a registered letter and an e-mail to Alvaro Collazo requiring him to transfer the domain name. Having received no reply, an additional e-mail was sent on December 2, 2004, (Exhibit 5). The domain name was subsequently transferred to the Respondent on December 5, 2004, (Exhibit 1).

It appears that Alvaro Collazo transferred the domain name to the Respondent a mere three days after having received the last e-mail sent by the Complainant’s attorneys. Further, Alvaro Collazo has been involved – as Respondent – in a number of UDRP-cases involving cybersquatting (Expedia, Inc v. Alvaro Collazo, WIPO Case No. D2003-0716; TV Globo Ltda. v. Alvaro Collazo, WIPO Case No. D2003-1013; Bank of America Corporation v. Alvaro Collazo, NAF Claim number FA248681; The Neiman Marcus Group, Inc. v. Alvaro Collazo, NAF Claim number FA248954; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417).

The evidence submitted by the Complainant (Exhibit 1 and above mentioned decisions) supports the conclusions that: (1) Alvaro Collazo has a well-known pattern of registering and using domain names in bad faith; and, (2) the domain name was transferred to the Respondent very shortly after reception of the Complainant’s request to transfer the domain name.

Based on the Complainant’s allegations and the evidence submitted, the Panel holds, in the absence of a Response, that there appears to be no explanation other than a close relationship between the Respondent and Alvaro Collazo who transferred the domain name at issue to the Respondent with the intention to obstruct any action undertaken by the Accor group to enforce their rights. Therefore, facts submitted to the Panel concerning Alvaro Collazo are relevant for examining the merits of this case.

II. Substantive issues

The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond.

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief. Because the Respondent has defaulted in providing a Response to the allegations of the Complainant, the Panel is directed to decide these administrative proceedings on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a)).

A. Identical or Confusingly Similar

The Complainant uses the trademarks ACCOR in connection with its core commercial activities, namely hotel and travel services.

The Respondent has registered the domain name <accorhoteles.com>. This name is identical to the Complainant’s trademark ACCOR, except that (1) the domain name adds the generic top-level domain “.com”; (2) the domain name combines the Complainant’s mark with a generic term “hotel”; and, (3) the domain name employs lower case letters, while the trademark is used with upper case letters.

(1) The addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants; “.com” is one of only several such gTLDs; and, “.com” does not serve to identify a specific enterprise as a source of goods or services (Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503).

(2) A domain name which incorporates the Complainant’s mark with the adjunction of a generic word can be deemed to be confusingly similar to the mark. Confusion is only heightened when the generic word added by the Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark. (Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026). In this instance, the addition of the word “hoteles” tends to compound the confusion (ACCOR, Société Anonyme à Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517).

(3) Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in <accorhoteles.com> is a difference without legal significance from the standpoint of comparing <accorhoteles.com> to ACCOR (Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503).

The Panel therefore holds that the domain name <accorhoteles.com> is confusingly similar to Complainant’s ACCOR trademarks in the sense of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lays out a non-exhaustive list of circumstances which can be contended by the Respondent to demonstrate his rights or legitimate interests.

The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes his case prima facie (Neusiedler Aktiengesellschaft v. Ninayak Kulkarni, WIPO Case No. D2000-1769; Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704; De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that the Complainant has indeed made a prima facie case showing that the Respondent has no rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.

This finding is based on the following, non-disputed, circumstances.

The Complainant has no relationship whatsoever with Respondent and has never authorised the Respondent to use the domain name <accorhoteles.com>. It can be stated that the Complainant’s trademarks and service marks are known, as the Complainant is a well-known group of hotels. There is no indication in the file that Respondent is known under the disputed domain name. Use of a domain name that is identical or confusingly similar to a trademark of a complainant when applied to goods sold by a respondent is not a bona fide use if the domain name. Such use serves as “bait” to attract customers to the respondent’s website, rather than as a description of the respondent’s products (Adobe Systems Incorporated v. Domains OZ, WIPO Case No. D2000-0057). The disputed domain name is primarily descriptive of the Complainant’s services as it incorporates Complainant’s trademarks and service marks. The Panel finds that the fact that the domain name <accorhoteles.com> resolves to a website through which, among others, hotel rooms can be booked does not mean that the domain name is descriptive of the Respondent’s products. The Respondent’s use of the disputed domain name therefore appears to be merely intended to divert (potential) customers to the Respondent’s website and cannot be considered a bona fide offering of goods or services.

Given these circumstances, the Panel finds that the conditions set out in paragraph 4(a)(ii) of the Policy have been met.

C. Registered and Used in Bad Faith

For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name, or”; (2) “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or; (4)“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”

There is no conceivable good faith use to which the Respondent, who has no rights or legitimate interests in the domain name at issue, could put the domain name, which is identical or confusingly similar to the Complainant’s mark. To quote a prior panel decision, “[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it”. Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. Accordingly, the Panel finds that the practice of “typosquatting” constitutes registration and use in bad faith”. (General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377). This Panel, likewise, finds that the “typosquatting” engaged in by the Respondent here constitutes bad faith registration and use. (Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302, see above Preliminary issue).

Therefore, the Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Respondent clearly registered and uses the domain name to attract business to its site.

The Complainant has therefore demonstrated that the Respondent registered the domain name in bad faith and continues to use it in bad faith (paragraph 4(a)(iii), Policy).

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, <accorhoteles.com> be transferred to the Complainant.

Michel N. Bertschy
Sole Panelist

Dated: May 11, 2005