The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Domainjet, Inc. of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2012. On January 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 16, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceeding. On January 20, 2012, Respondent emailed the Center with a request that the proceedings be conducted in Chinese.
The Center verified that the 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 Respondent in both Chinese and English of the Complaint, and the proceedings commenced on January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. Respondent did not reply to the Complaint. Accordingly, the Center notified Respondent’s default on February 13, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 20, 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. 4. Factual Background
Complainant maintains hotels and provides accommodation services. One of Complainant’s service marks is ACCOR; Complainant has provided details of International Registrations for ACCOR and ACCOR (and design) which cover goods and services including hotel and temporary accommodation services. These marks are registered under International Registration Nos. 727696 and 953507. Both International Registrations are recognized in multiple jurisdictions including China. These registrations were granted on December 28, 1999 and August 16, 2007 respectively.
Respondent is identified as Domainjet, Inc. of Shanghai, China. The disputed domain name was created on December 11, 2009.
Complainant sent a cease and desist letter to Respondent on October 18, 2010. The record shows that an individual by the name of J. Sun replied to Complainant’s letter on October 21, 2010 on behalf of Respondent stating that the disputed domain name was being prepared for future use as an entertainment website in China and offering to change its planned name from “accoronline” to something else. On November 5, 2010, Complainant replied to the email sent on behalf of Respondent requesting confirmation that the disputed domain name would be transferred from Respondent to Complainant in light of Respondent’s indication that it would change its name. On November 30, 2010, an email was sent on behalf of Respondent to Complainant suggesting that Complainant propose terms for transfer of the disputed domain name. Complainant responded to this communication on January 12, 2011 stating that it would refund Respondent’s registration fees if Respondent could provide invoices confirming payment of these fees. On January 19, 2011, an email was sent to Complainant on behalf of Respondent requesting EUR 1,500 in exchange for the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant objects to the disputed domain name because it incorporates its ACCOR trademark and has been used to display links to third party websites offering travel and accommodation services. Complainant alleges that the disputed domain name is confusingly similar to its ACCOR trademark because it combines its ACCOR trademark with the term “online”, a term which Complainant cites as generic.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the name “Accor”, is not affiliated with Complainant, and has not been provided with a license or authorization to use Complainant’s ACCOR trademark. Regarding bad faith, Complainant raises multiple allegations:
- Respondent did not demonstrate any legitimate use of the domain name prior to the dispute;
- Respondent has used the disputed domain name to display links to third party websites offering services competitive with those offered by Complainant under its ACCOR service marks;
- The webpage featured at the disputed domain name advertises the domain name for sale;
- Respondent replied to Complainant’s cease and desist letter with an offer to sell the disputed domain name for EUR 1,500;
- Respondent has been involved in prior disputes involving domain names which incorporate well-known trademarks;
- Complainant’s ACCOR trademark has been recognized as well-known; and
- Complainant operates hotels in China, Respondent’s country of residence.
Complainant has requested that the disputed domain name be cancelled. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding, while Respondent has submitted a request for Chinese to be the language of the proceedings. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. The content featured on the website at the disputed domain name is displayed in the English language. This demonstrates that Respondent has a working knowledge of this language, a point which was confirmed in a prior case involving Respondent (see Missoni S.p.A v. 仲裁域名 / DomainJet, Inc. / Jack Sun,WIPO Case No. D2011-1058).
Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the complaint and other materials would cause unnecessary delay. B. Identical or Confusingly Similar
The disputed domain name combines Complainant’s ACCOR service mark with the term “online”. It has been held by prior panels that the incorporation of a trademark in its entirety into a domain name supports a finding of confusing similarity. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark ‘Xerox’. This is sufficient to justify the finding that the name is ‘confusingly similar’ to the Complainant’s registered trademarks”). The incorporation of the term “online” does nothing to distinguish the disputed domain name from Complainant’s trademark. The term “online” has been cited as a generic term in multiple decisions involving domain names which combine this term with a trademark (see, e.g., Barnes & Noble College Bookstores, Inc. v. Good Domains,WIPO Case No. D2002-0812 and Dell Computer Corporation v. Parmi Phull,WIPO Case No. D2001-0285).
The requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Complainant has established rights in the ACCOR service mark which precede the creation of the disputed domain name. Complainant’s rights are recognized in China, the jurisdiction cited as Respondent’s country of residence.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “accor” or “accoronline”. One of the few communications from Respondent stated that an entertainment website was being developed for China and that its name would be “accoronline”, however no evidence has been provided by Respondent to substantiate these claims or establish that its proposed use of “accoronline” would be distinguishable from Complainant’s ACCOR service mark. Further, no evidence of prior rights in the terms “accor” or “accoronline” has been provided by Respondent.
Complainant has provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name. The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
Complainant’s ACCOR service mark has been recognized as well-known and distinctive (see ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362). Given the notoriety of Complainant’s ACCOR service mark, the extent of Complainant’s activities in China, and Complainant’s prior trademark rights in China, it is clear that Respondent was likely aware of Complainant or should have known of Complainant when registering the disputed domain name.
The record shows that the disputed domain name has been used to display links to third party websites offering services within the same channels of trade as those rendered by Complainant under its ACCOR service mark. Use of a website incorporating another party’s mark to display third party links to goods or services which compete with those sold under the mark at issue demonstrates bad faith registration and use. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. The incorporation of Complainant’s service mark in the disputed domain name combined with the content featured on the website at the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the links featured at the disputed domain name are sponsored by, endorsed by, affiliated with, or approved by Complainant. This is bad faith use and such conduct falls within the scope of paragraph 4(b)(iv) of the Policy. There is no evidence in the record to refute this conclusion.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 domain name be cancelled.
Kimberley Chen Nobles
Sole Panelist
Dated: March 7, 2012
Full & Egal Universal Law Academy