The Complainant is Accor of Evry, France, represented by Dreyfus & associés, France.
The Respondent is PrivacyP, Domain Admin of Queensland, Australia / Dmitriy of Ufa, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and are registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On January 3, 2012, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain names. On January 5, 2012, UK2 Group Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 12, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2012. On February 22, 2012, the Center re-notified the Complaint together with the correct amended Complaint and the new Response due date was March 3, 2012. The Respondent did not submit any response.
The Center appointed Ladislav Jakl as the sole panelist in this matter on March 6, 2012. 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.
On the question of the language of the administrative proceedings, the concerned Registrar confirmed that the language of registration agreement is English. The Panel notes that the content of the website is in Russian. The Complainant requests the Panel to decide that the language of the administrative proceedings in this case be English. The Respondent did not submit any comments regarding this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; Z, Inc. v Zufu aka Huahaotrade,WIPO Case No. D2008-1191; Pandora Jewelry, LLC v. Wang Feng,WIPO Case No. D2009-1533), decides that the language of the administrative proceedings will be English in accordance with paragraph 11(a) of the Rules. 4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant is the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant operates more than 4,200 hotels in 90 countries worldwide and includes notable hotel chains such as Mercure, which is established in 49 countries in Europe, Africa, the Middle East, Pacific Asia and in North and South America. In particular, the Complainant operates 229 Mercure hotels in France. The Complainant also operates 4 Mercure hotels in the same area near Val d’Isère. Moreover, the Complainant operates 157 hotels in Australia and more specifically 57 Mercure hotels, where the privacy shield is located. The Complainant is the owner of the Community trademark M MERCURE, registration No. 6277032, dated September 1, 2008 and covering services in classes 39, 41 and 43, and of the international registration for the trademark M MERCURE ACCOR HOTELS No. 847330, dated December 13, 2004, covering services in classes 39, 41 and 43. In addition, the Complainant operates its website at the domain name , registered on April 16, 1996, reflecting its trademark.
The disputed domain names and were registered on October 11, 2010.
The Complainant requests the Panel, appointed in this administrative proceeding, that the disputed domain names be cancelled. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to its trademark MERCURE, that the Respondent has no rights or legitimate interests in respect to the disputed domain names and that the disputed domain names were registered and are being used in bad faith.
The Complainant introduces that the disputed domain names are confusingly similar to its MERCURE trademark and that the mere addition of the geographic term “valdisere” is not sufficient to distinguish the disputed domain names from the Complainant’s MERCURE trademark. The Complainant also refers to numerous UDRP decisions which have established that a domain name that consists of a trademark plus a geographic term is still confusingly similar to that trademark (Accor v. Vu Duy Truong,WIPO Case No. D2011-0093; Accor v. Lee Dong Youn, N/A,WIPO Case No. D2008-0705; and Accor S.A. v. .,WIPO Case No. D2007-1257). The mere addition of the gTLD suffix “.com” is irrelevant because the generic top level domain suffix is not a distinctive element when assessing whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks (Accor v. Noldc Inc,WIPO Case No. D2005-0016; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
As to rights or legitimate interests in respect of the disputed domain names, the Complainant essentially contends that the Complainant has not authorized the Respondent to seek registration of any domain name incorporating said Complainant’s trademark. The registration of the MERCURE trademark preceded the registration of the disputed domain names and for years.
In the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed. Moreover, the Complainant contends that the sole objective of the Respondent in choosing domain names that incorporate MERCURE in its entirety and the geographic term “valdisere” is to benefit from the reputation of the trademark MERCURE. Given the fame of the Complainant’s trademarks, the Respondent could not have a legitimate contemplated use for offering goods or services at the disputed domain names. The disputed domain names are thus not used in connection with bona fide offering of goods and services. The unauthorized appropriation of another’s trademark in the disputed domain names and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondent.
Furthermore, the Complainant asserts that the disputed domain names were registered and are being used in bad faith. The Respondent registered the disputed domain names and on October 11, 2010 and it is implausible that it was unaware of the Complainant’s trademark when it registered the disputed domain names. Bad faith has already been formed where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303).
Moreover, the Complainant argues that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its trademark in the disputed domain names and that this type of conduct constitutes evidence of the Respondent’s bad faith (L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242). The presence of the geographic term “valdisere” in the disputed domain names illustrates the Respondent’s bad faith since it refers to the Complainant’s Mercure hotels located in the area of Val d’Isère and to former Mercure hotel that became Ormelune hotel. According to the Complainant this situation is highly damaging for the Complainant since Internet users could believe that the hotel located in Val d’Isère is still a Mercure hotel. 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 that each of the three following elements is satisfied:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The disputed domain names and include in their entirety the Complainant’s trademark MERCURE and the geographic term “valdisere”. Such a combination of the Complainant’s trademark and geographic term does not avoid the confusing similarity (Accor v. Vu Duy Truong, N/A,WIPO Case No. D2011-0093; Accor v. Lee Dong Youn,WIPO Case No. D2008-0705; and Accor S.A. v. .,WIPO Case No. D2007-1257). The mere addition of the gTLD suffix “.com” is irrelevant because the generic top level domain suffix is not a distinctive element when assessing whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks (Accor v. Noldc Inc,WIPO Case No. D2005-0016; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Mere addition of a descriptive term by way of prefix to a complainant’s trademarks does not adequately distinguish the domain names from the trademark pursuant to the Policy, paragraph 4(a)(i). See Wal -Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F. Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717; Sanofi-Aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2008 -1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. Also the hyphen between the terms “mercure” and “valdisere” is not a distinctive element.
For all the above cited reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
As to rights or legitimate interests in respect of the disputed domain names, the Complainant has not licensed or otherwise authorized the Respondent to seek registration of any domain name incorporating said Complainant’s trademark. The registration of the MERCURE trademark preceded the registration of the disputed domain names and for years. Moreover, the sole objective of the Respondent in choosing domain names that incorporate MERCURE in its entirety and the geographic term “valdisere” is to benefit from the reputation of the trademark MERCURE. Given the fame of the Complainant’s trademark, the Respondent could not have a legitimate contemplated use for offering goods or services at the disputed domain names. The disputed domain names are thus not used in connection with a bona fide offering of goods and services. The unauthorized appropriation of another’s trademark in the disputed domain names and the commercial use of the corresponding website cannot, in this Panel’s view, confer rights or legitimate interests upon the Respondent. Moreover the Panel finds that the disputed domain names are not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. There is a consensus view that such behaviour cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use (The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both bad faith registration and use. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.
The Respondent registered the disputed domain names and on October 11, 2010. The Complainant is the owner of the Community trademark M MERCURE, registration No. 6277032, dated of September 1, 2008 and covering services in classes 39, 41 and 43 and international registration for the trademark M MERCURE ACCOR HOTELS No. 847330, dated of December 13, 2004, covering services in classes 39, 41 and 43. In addition, the Complainant operates its website at the domain name , registered on April 16, 1996, reflecting its trademark. It is implausible that the Respondent was unaware of the Complainant’s trademark when he registered the disputed domain names. Bad faith has already been established where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303). There is no doubt to this Panel that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its trademark in the disputed domain names and that this type of conduct constitutes evidence of the Respondent’s bad faith (L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242). The presence of the geographic term “valdisere” in the disputed domain names illustrates the Respondent’s bad faith since it refers to the Complainant’s Mercure hotels located in the area of Val d’Isère and to former Mercure hotel that became Ormelune hotel. According to the Complainant this situation is highly damaging for the Complainant since Internet users could believe that the hotel located in Val d’Isère is still a Mercure hotel. The Panel further finds that by using the Complainant’s trademark MERCURE to divert Internet users to an unrelated site the Respondent is attempting, for commercial gain, to attract Internet users and thus to disrupt the Complainant’s business. The Respondent’s registration and use of the disputed domain names are in bad faith because the Respondent intentionally attempts to attract Internet users who have an interest in purchasing or obtaining additional information about MERCURE services, and then forwards them to other websites, which may result in financial benefit to the Respondent. Such conduct has been found to be indicative of bad faith in previous UDRP decisions such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain names were registered and used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be cancelled.
Ladislav Jakl
Sole Panelist
Dated: March 19, 2012
Full & Egal Universal Law Academy