The Complainant is ACCOR of Evry, France, represented by Dreyfus & Associés, France.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On the same date, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On February 9, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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” 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 February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on March 22, 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
The Complainant is a company incorporated under French law. The Complainant’s group includes the hotel chain Mercure, established in 49 countries with 700 hotels worldwide, including 188 hotels in Latin America and the Caribbean. The Complainant operates a network under GRAND MERCURE in the Asia Pacific region covering 44 hotels and apartments in Australia, China, Indonesia, New Zealand, Singapore, Thailand and Viet Nam, including the hotel GrandRAND Mercure Roxy Singapore, located on Roxy Square, Singapore.
The Complainant has registered inter alia the following trademarks:
- Community Trademark No. 006277032, M MERCURE (figurative), filed on September 13, 2007, in class 39, 41 and 43 and registered on September 1, 2008.
- International Trademark Registration No. 900835, M GRAND MERCURE ACCOR HOTELS (figurative), registered on September 29, 2006, in class 43, designating Australia, Switzerland, China, Cuba, Algeria, Egypt, Japan, the Republic of Korea, Morocco, Norway, the Russian Federation, Singapore, Turkey and Viet Nam.
Furthermore, the Complainant has registered the domain name on April 16, 1996.
MERCURE is – especially for hotel services – a well-known trademark worldwide.
Pursuant to paragraph 10(a) of the Rules and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5, the Panel, despite the fact that the Complainant did not explicitly include such in its pleadings, notes that the Complainant also is the owner of several trademarks consisting of, or including the word “accor” in respect of hotel and related services, including, inter alia, International Registration 480492, 687060, 727696, 756453, 773532, 779873, 788342, 829736, 847330, 875041. This for example is demonstrated in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, which was submitted by Complainant as Annex 14.
The Respondent is a company located in Saint Vincent and the Grenadines.
The disputed domain name was registered on May 10, 2008 and resolved, at the time of filing, to a parking page showing sponsored links in the field of hotel industry, including links to Complainant’s competitors.
The Complainant sent a cease-and-desist letter by registered mail and email to the Respondent on June 1, 2011, who did not reply. 5. Parties’ Contentions A. Complainant
The Complainant made the following contentions:
The disputed domain name is confusingly similar to Complainant’s trademarks. It incorporates the trademarks in their entirety (referring to several decisions issued under the UDRP) and adds the geographic term “roxy” (which refers to Roxy Square, Singapore, where the hotel Grand Mercure Roxy Singapore is located). The trademark MERCURE is well-known (See Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243; and ACCOR v. Ata Kivilcim,WIPO Case No. D2006-1366). The addition of the gTLD “.com” is irrelevant. As a result, it clearly appears that the disputed domain name is identical or confusingly similar to Complainant’s trademarks.
The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the trademarks preceded the registration of the disputed domain name for years. The Respondent is not affiliated with the Complainant and not authorized to use the well-known trademarks (referring to several UDRP decisions). Given the fact that the Complainant’s trademarks are well-known, the Respondent could not have a legitimate interest in the disputed domain name. The Respondent did not demonstrate any use of the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolved to a parking page providing pay per click revenues to Respondent.
The Respondent appears to be hiding its identity by using a “privacy shield”. Based on UDRP decisions, it can be assumed that Respondent has no rights or legitimate interests in the disputed domain name.
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, because the Complainant’s trademarks are well-known, also in the Caribbean. Based on UDRP decisions, when a domain name is so obviously connected with a well-known trademark, its very use by someone with no connection to the trademark suggests opportunistic bad faith. Based on UDRP decisions, the knowledge of a corresponding trademark at the time of the domain name’s registration suggests bad faith. The combination of the words “grand mercure roxy” does not have any meaning in any language. The Respondent had the intent and is trading on the goodwill of the Complainant’s famous service mark to intentionally attract Internet users to the Respondent’s parking page for the purpose of commercial gain. A quick trademark or Internet search would have revealed to the Respondent the trademarks of the Complainant. Bad faith is illustrated by the concrete reference of the disputed domain name to the Complainant’s hotel Grand Mercure Roxy Singapore.
At all times the Respondent has been aware of the Complainant’s trademarks and that the Complainant’s trademark has been a well-known sign. In light of this knowledge, the Respondent uses the disputed domain name in bad faith to direct Internet users to a parking page. This is highly damaging for the Complainant since Internet users could believe that the parking page is related to the Complainant. Indeed, the Respondent is taking undue advantage of the Complainant’s trademarks and reputation to generate profits.
No other legal proceedings have been commenced or terminated in connection with or relating to the disputed domain name .
The Complainant requests that the disputed domain name be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted. Paragraph 5(e) of the Rules stipulates that if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. As the Respondent did not reply to the Complainant’s contentions and the Panel cannot see any exceptional circumstances, the Panel decides the dispute based upon the Complaint and the statements and documents submitted. A. Identical or Confusingly Similar
The Complainant is the holder of a Community Trademark, M MERCURE (figurative), and an International Trademark registration, M GRAND MERCURE ACCOR HOTELS (figurative), designating Australia, Switzerland, China, Cuba, Algeria, Egypt, Japan, the Republic of Korea, Morocco, Norway, the Russian Federation, Singapore, Turkey and Viet Nam and trademarks consisting or respectively including “accor” designating numerous countries worldwide. Relied-upon trademarks were registered before the registration of the disputed domain name .
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark(s) alone, independent of the location of the trademark, the goods or services for which the trademark is registered, irrespective of how the disputed domain name is used or other factors, usually considered in trademark infringements. Consequently, the threshold test for confusing similarity under the Policy involves a comparison between the trademark as such and the disputed domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademarks generally need to be recognizable as such within the disputed domain name; the addition of e.g. descriptive terms has generally been regarded as insufficient to prevent Internet user confusion. As domain names are alphanumeric strings the confusing similarity test under the Policy typically involves only the alphanumeric elements of the trademarks involved (See paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Although the Community Trademark, M MERCURE, and the International Trademark Registration, M GRAND MERCURE ACCOR HOTELS, are figurative trademarks, the Panel finds that the figurative elements are not determinative. Consequently, the Panel finds it appropriate to compare only the alphanumeric elements / strings, namely “m mercure” and “m grand mercure accor hotels”. The Panel also finds that the top-level suffix in the disputed domain name, namely “.com”, can – as usual under the Policy – be disregarded.
The disputed domain name wholly incorporates the main element of the Complainant’s trademark M MERCURE. The additions in the disputed domain name, namely “grand” and “roxy”, do not eliminate any confusing similarity between the Complainant's trademark and the disputed domain name, as the additions are not distinctive. The Panel finds it not necessary to deal with the grades of distinctiveness of the elements “grand mercure” on the one side, and “accor hotels” on the other in the International Trademark registration M GRAND MERCURE ACCOR HOTELS and consequently, with the question whether the disputed domain name also infringes this trademark.
However, taking into account that the Complainant is using the sign GRAND MERCURE ROXY SINGAPORE for its hotel in Singapore, the use of the disputed domain name leads –in connection with the parking page displaying sponsored links in the hotel industry – to a risk that Internet users may actually believe there is a real connection between the disputed domain name and the Complainant and/or its services, although the Panel is of the opinion that such risk would not be required for satisfying the first element of the Policy.
The Panel thus finds already by a comparison between the Complainant’s trademark M MERCURE as such and the disputed domain name itself that the disputed domain name is confusingly similar to this trademark in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy clearly stipulates that the overall burden of production rests with the Complainant. The Panel recognizes that the burden of production could result in the impossible task of proving a negative, requiring information that is only within the knowledge of the Respondent, who did not reply.
The Panel follows the view that a prima facie case regarding the lack of rights and legitimate interests can be sufficient under the Policy and that once such prima facie case is made, the burden of proof shifts to the other party and if the other party fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, generally the requirements of the Policy, paragraph 4(a)(ii), are met.
The Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use or to register any domain name incorporating the Complainant’s the well-known element MERCURE of its trademark M MERCURE or any other similar sign. The Panel follows the Complainant’s argument that in the absence of any license or permission to use a well-known trademark there is prima facie no actual or contemplated bona fide or legitimate use of the disputed domain name incorporating the well-known element MERCURE . Furthermore, the Panel finds that using the disputed domain name for a parking page including links to the Complainant’s competitors is prima facie showing that the Respondent has no rights or legitimate interests.
Consequently, the Respondent would have the burden to show rights or legitimate interests in the disputed domain name.
As the Respondent did not reply, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to Paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name was registered on May 10, 2008, years after many of the Complainant’s trademarks had been registered.
Also back in 2008, the characteristic element MERCURE of Complainant’s trademark M MERCURE was well-known and widely used also in Latin America and the Caribbean, at the seat of the Respondent. Therefore, the Panel follows the argument of the Complainant that it is implausible that the Respondent was unaware of the Complainant its trademarks, or the names of its hotels, especially Grand Mercure Roxy Singapore, when the Respondent registered the disputed domain name. The choice of the disputed domain name certainly is not coincidental anyway and even less so given the prominence of Complainant’s hotels in the hotel business worldwide. Consequently, the Panel considers that the Respondent knew Complainant’s trademarks, and the Respondent must have been aware that the use of the disputed domain name could be an infringement of the Complainant’s (trademark) rights. In this knowledge, the Respondent registered the disputed domain name incorporating the most relevant element of Complainant’s well-known trademark M MERCURE. Because of the knowledge of the Complainant’s trademarks, it is again implausible that the Respondent was unaware of the Complainant’s Grand Mercure Roxy Singapore hotel and although the Respondent had this knowledge, the Respondent registered the disputed domain name.
Therefore, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name resolved, at the time of the filing, to a third party parking website showing sponsored links. The inclusion of such advertising links may not necessarily be a basis for finding bad faith. However, in the actual case, the sponsored links are related to the hotel industry, including links to Complainant’s competitors and the Respondent did not take steps to change this although the Complainant had sent out cease-and-desist letters. At the latest after the cease-and-desist letters, the Respondent was aware of the Complainant’s trademarks and the sponsored links. As the domain name registrant generally is responsible for the content appearing on a website at its domain name, even if the registrant may not be exercising direct control over such content, the Respondent is responsible for the content especially as Internet users are likely to get the idea that the Respondent’s website is endorsed or sponsored by the Complainant.
Therefore, the Panel finds that the the disputed domain name is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy..
The Panel therefore finds already on this base that the Complainant has established the requirement of paragraph 4(a)(iii) of the Policy. 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 name be cancelled.
Christian Gassauer-Fleissner
Sole Panelist
Dated: April 3, 2012
Full & Egal Universal Law Academy