The Complainant is ACCOR of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Dursun Atak of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed Domain Names , , , , , are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 21, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Names. On February 21, 2012, GoD, LLC 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 3, 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
Based on the written evidence submitted by the Parties, the Panel finds the following to be the facts of this case:
The Complainant is a French company that owns a hotel network comprised of 4,200 hotels worldwide.
The Complainant owns trademark registrations in the ACCOR trademark, including an international trademark registration No. 953507 dated August 16, 2007 and a Turkish trademark registration No. 200820276 dated October 13, 2009.
In 1998 the Complainant registered two Domain Names incorporating its trademark: and that resolve to websites that provide information about the Complainant’s goods and services.
The Respondent is Dursun Atak, a resident of Turkey. On May 26, 2011, the Respondent registered the Domain Names , and . The next day, the Respondent registered . On August 5, 2011, the Respondent registered and on September 12, 2011, he registered .
For some period of time, the Domain Names and resolved to pay-per-click websites displaying links to the Complainant’s and third-party goods and services.
In August of 2011, the Complainant discovered that the Respondent registered and . On August 3, 2011, the Complainant sent a cease and desist letter to the Respondent by email and by registered mail. In its letter, the Complainant advised the Respondent about its rights in the ACCOR trademark and requested that the Respondent cancel and .
The registered letter returned to the Complainant with an indication that the recipient’s address was invalid.
On September 3, 2011, the Complainant received an email from a person claiming to be Mustafa Yilmaz, an official representative of the Respondent. Mustafa Yilmaz conceded that he knew the ACCOR trademark very well and appreciated Accor as a Class A mark. In his email, Mr. Yilmaz stated “as I was registering the mentioned domain name, I did not have any intentional ill will at all. I used to search for buying logical domain names on the net, and I just realized that this one is still available, so I got it. And again, as far as I know, it is not an obligation to take any one’s permission or authorization for registering a domain name on the internet. My particular aim is to be a part of large hotel chains’ affiliate programs. Under these circumstances, I think your side should take more steps further and offer me a reasonable solution or a beneficial path to follow. That is; I am ready to deliver the domain name with a reasonable price.”
Meanwhile, the Complainant learned that the Respondent had also registered the Domain Names , , and . On November 7, 2011, the Complainant sent a second cease and desist letter to the Respondent by registered mail and by email to both the Respondent and Mustafa Yilmaz. In its letter, the Complainant refused to pay the Respondent for cancellation or transfer of the Domain Names, which value was created by the Complainant’s investments and efforts. Like the first registered letter, the second registered letter was returned as undeliverable. The Complainant’s email remained unanswered.
Later on, the websites to which the Domain Names resolved were modified. As of February 17, 2012, each of the following websites: “www.,” “www.,” “www.,” and “www. ” displayed , , , , Domain Names and invited Internet users to make “…offers and suggestions for this [sic] domain names” and provided contact information of the Respondent. At that time, the domain name resolved to a default page stating “Sorry! This site is not currently available.” 5. Parties’ Contentions A. Complainant
The Complainant claims that it is the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant alleges that it operates more than 4,200 hotels in 91 countries.
The Complainant claims that the Domain Names are identical or confusingly similar to its ACCOR trademark. The Complainant claims that it is an owner of a well-known trademark ACCOR. The Complainant alleges that it owns several trademark registrations in the ACCOR trademark, including an international trademark registration No. 953507 dated August 16, 2007, and a Turkish trademark registration No. 200820276 dated October 13, 2009. The Complainant further alleges that it owns domain names and that reflect its trademark. According to the Complainant, the notoriety of its mark has been established in several UDRP decisions.
The Complainant alleges that the Domain Names are confusingly similar or identical to its ACCOR trademark because they incorporate its ACCOR trademark in its entirety. In the Complainant’s opinion, the addition of the generic terms “hotel(s),” “booking” and “search” to the ACCOR trademark in the Domain Names adds to confusion of the Domain Names with its trademark, because these terms are descriptive of the main field of the Complainant’s activity. The Complainant further alleges that the mere addition of the extension “.com” is irrelevant because it is well established that the generic top level domain name is not an element of distinctiveness.
The Complainant claims that the Respondent has no rights or legitimate interest in the Domain Names. The Complainant maintains that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use its trademarks or to register the Domain Names. The Complainant further alleges that the Respondent has no prior rights or legitimate interest in the Domain Names because the registration of its ACCOR trademark preceded the Registrant’s registration of the Domain Names by several years. The Complainant further alleges that the Respondent is not commonly known by the Domain Names because in the absence of any license or permission from the Complainant to use its well-known trademark, no actual or contemplated bona fide or legitimate use of the Domain Names could be reasonably claimed.
In addition, the Complainant claims that the Respondent did not demonstrate preparation to use the Domain Names in connection with a bona fide offering of goods or services, because and initially directed to pay-per-click landing pages, which included the Complainant’s goods and services. In the Complainant’s view, such circumstances do not amount to use in connection with a bona fide offering of goods or services. The Complainant claims that the sole objective of the Respondent’s choosing the Domain Names that incorporate its trademark ACCOR in conjunction with the terms “hotel(s),” “booking” and “search” was to benefit from the reputation of the trademark ACCOR. In the Complainant’s view, the Domain Names are so identical to its well-known trademark that the Respondent cannot reasonably claim he was intending to develop a legitimate activity through the Domain Names. Finally, the Complainant alleges that the Respondent’s alleged representative Mustafa Yilmaz confirmed his awareness of the Complainant’s trademark and the Respondent’s reason for the Domain Names registration was to be part of an affiliation program involving a large hotel group.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant claims that bad faith registration is found where the Respondent knew of the Complainant’s marks at the time of the registration. According to the Complainant, the reputation of the Complainant and its trademark, the Respondent’s use of the ACCOR trademark in combination with the generic terms “hotel(s),” “booking” and “search” proves that the Respondent was aware of existence of the Complainant’s trademark. In addition, the Complainant claims that bad faith registration is found where a domain name consists of a well-known trademark. In Complainant’s view, a trademark search for the mark ACCOR would have revealed to the Respondent the existence of the Complainant’s mark, and even if the Respondent did not know how to conduct a trademark search, a simple Internet search would reveal the Complainant’s products. The Complainant alleges that the Respondent’s alleged representative admitted the Respondent’s knowledge of Complainant and its trademark. The Complainant claims that it is likely that the Respondent registered the Domain Names to prevent the Complainant from reflecting its trademarks in the Domain Names, which constitutes evidence of bad faith.
The Complainant claims that the Respondent is using the Domain Names in bad faith because the Respondent used the Domain Names and initially as pay-per-click landing pages, which is not a bona fide or legitimate use in absence of license or permission from the Complainant. The Complainant further claims that the Respondent’s offer to transfer the Domain Names to the Complainant for a “reasonable price” sent in response to the Complainant’s cease and desist letter is evidence of bad faith use. According to the Complainant, the fact that the Respondent currently uses the and Domain Names to resolve to poorly designed websites that offer all of the Domain Names for sale is also evidence of use in bad faith. The Complainant claims that passive use of the domain name is also use in bad faith because the Complainant’s mark has a strong reputation, the Respondent provided no evidence of bona fide use of the Domain Names and the Respondent provided false contact details when he registered the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in its case: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
If a respondent fails to respond to the complaint, “the respondent’s default does not automatically result in a decision in favor of the complainant.”1 “Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”2 A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence copies international trademark registration No. 953507 dated August 16, 2007. and Turkish trademark registration No. 200820276 dated October 13, 2009. The Panel, therefore, finds that the Complainant has established its rights in the ACCOR mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.3
In this case, the Domain Names consist of the ACCOR trademark and combinations of words “hotel,” “hotels,” “booking” and “search” and a generic to-level domain suffix “com”. The Panel finds the Domain Names to be confusingly similar to the ACCOR mark because the Domain Names incorporate the Complainant’s trademark in its entirety.4 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity. 5 In this case, the addition of the generic words “hotel(s),” “booking” or “search” to the Complainant’s mark does not create a new or different mark, and is insufficient to avoid a finding of confusing similarity. Moreover, addition of the words “hotel(s),” “booking” or “search” adds to the confusion because they describe the services provided by the Complainant. When used in combination with the Complainant’s trademark, the words “hotel(s),” “booking” or “search” may confuse Internet users into believing in affiliation or authorization of the Domain Names with the Complainant. Finally, it is well established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.6
Because the Complainant has proven that the Domain Names are confusingly similar to the ACCOR trademark in which the Complainant has rights, the first element of paragraph 4(a) of the UDRP has been satisfied. B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Names. “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”7 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.8
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Panel finds that the Complainant made out a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Names for four reasons.
First, the Complainant neither licensed nor otherwise authorized the Respondent to use the Domain Names. Second, the Respondent did not use the Domain Names in connection with a bona fide offering of goods or services. Third, the Respondent used the Domain Names for commercial gain and to misleadingly divert Internet users to its websites. Fourth, the Respondent has not been commonly known by the Domain Names.
The Complainant alleges that the Respondent is not authorized or licensed to register and use the ACCOR trademark or to seek registration of any Domain Names incorporating the ACCOR trademark. Moreover, in his September 3, 2011 email, the Respondent’s representative freely concedes that he was aware of the Complainant’s trademark, and that in his opinion “it is not an obligation to take anyone’s permission or authorization for registering a domain name on the internet” thereby admitting that Respondent had no authorization from the Complainant to incorporate the ACCOR trademark in the Domain Names. Because the alleged representative of the Respondent replied to the Complainant’s letter directed and sent to the Respondent’s email address, Mustafa Yilmaz is either affiliated with or is the same person as the Respondent. In light of the Respondent’s failure to deny any affiliation with Mr. Yilmaz, the Panel will treat his contentions as those of the Respondent.
In previous UDRP cases, it has been held that, an unauthorized party cannot claim a legitimate interest in a domain name that intentionally contains, or is confusingly similar with, a complainant’s mark, as the activities of such party cannot be said to constitute a good faith offering of goods or services. 9 Since it is undisputed that the Domain Name is confusingly similar to the mark in which the Complainant has rights, the Respondent’s use of the Domain Name without Complainant’s authorization cannot constitute bona fide offering of goods or services in the circumstances of this case.
Furthermore, the Complainant submitted screenshots of the Respondent’s websites “www.hotel” and “www.” dated August 19, 2011. The evidence shows that until recently, the Respondent used the “www.hotel” and “www.” websites as PPC landing pages that displayed sponsored links to third-party hotels and to the Complainant’s hotels. It is well-established that, “use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services."10 Where such links are based on trademark value, such practices are generally considered as “unfair use resulting in misleading diversion.”11 Here, the evidence shows that the links displayed on the Respondent’s websites were clearly based on the value of the ACCOR mark because the links directed to websites offering for sale the Complainant’s goods and services as well as the goods and services of third parties. Such use does not constitute a “bona fide offering of goods and services” in the meaning of the Policy.
Nor did the Respondent’s use of the Domain Names constitute a legitimate noncommercial use of the Domain Names under the Policy, because it is likely that the Respondent received remuneration for displaying third-party advertising. Several UDRP panels have found that such circumstances do not represent a use in connection with a bona fide offering of goods or services.12
Similarly, the Respondent’s subsequent use of the Domain Names also does not constitute use in connection with bona fide offering of goods or services. The Complainant also submitted screenshots of the Respondent’s websites “www.,” “www.,” “www.,” and “www.” dated February 17, 2012. Each website displays all of the Domain Names except , and each website invites Internet users to make “…offers and suggestions for this [sic] Domain Names” and provides contact information of the Respondent. Another screenshot printout of February 17, 2012 shows that the domain name resolves to a default page stating “Sorry! This site is not currently available.” The domain name does not resolve to any website at all. The Panel finds that such use of the Domain Names does not constitute use in connection with bona fide offering of goods or services because the only goods or services the Respondent offers to the public are the Domain Names offered for sale.
Finally, there is no indication that the Respondent has been commonly known by the Domain Names. Moreover, in his September 3, 2011 email, the Respondent’s representative indirectly admitted the absence of any legitimate rights or interest in the Doman Names by expressing his awareness of the Complainant’s rights, claiming that his goal was to become a part of large hotels’ affiliate programs and offering the Domain Names to the Complainant “at a reasonable price.”
The Panel, therefore, finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the paragraph 4(a) of the UDRP has been established. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires a finding that both the registration and use of the Domain Name were in bad faith. It is well-established that “the requirements of Paragraph 4(a) of the Policy are conjunctive, thus Complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that it is more likely than not that the Respondent registered the Domain Names in bad faith because the Respondent was aware of the Complainant’s well-known ACCOR trademark. The Panel finds the ACCOR trademark is a well-known mark. As of the date of this decision, there have been 109 UDRP proceedings involving registration of Domain Names similar or identical to the ACCOR trademark. Multiple attempts to use the Complainant’s trademark value show that the ACCOR trademark is well-known. In addition, several UDRP panels found the ACCOR trademark to be well-known.13
Because the Panel concludes that the ACCOR trademark is well-known, it also finds that the Respondent, who has no connection with the ACCOR trademark, registered the Domain Names in bad faith. It is well-established that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered by someone with no connection with the product.14
Even if the Panel did not find “opportunistic bad faith,” the Panel still would have found that the Respondent registered the Domain Names in bad faith because the Respondent registered the Domain Names without any authorization from the Complainant despite his knowledge of the Complainant’s rights in the ACCOR trademark. In his September 3, 2011 email, Mustafa Yilmaz claimed that he knew the ACCOR trademark very well, but registered the Domain Names without any “ill will”. The Panel, however, is not convinced that someone who admittedly knows the value and reputation of a brand and who chooses to combine it with words describing services of the trademark holder to register four Domain Names does so without understanding that it may not be legal. The Respondent’s contention seems to be especially implausible because he used two of the Domain Names to direct to pay-per-click websites. Even if the Respondent indeed did not understand that he was doing something wrong at the time of the registration of the Domain Names, the Complainant’s cease and desist letter fully explained to the Respondent faultiness of his position. The Respondent, however, did nothing to rectify the situation and instead, went ahead and registered two additional Domain Names and .
Furthermore, it appears that the Complainant registered the Domain Names for the purpose of “selling, renting or otherwise transferring” the Domain Names to the Complainant or its competitor for valuable consideration exceeding its out-of-pocket expenses. Mustafa Yulmaz offered the Complainant to transfer and for a “reasonable price.” When the Complainant declined to pay for the Domain Names, the Respondent offered the Domain Names for sale to the public. In the Panel’s view, the Respondent actions indicate that the Respondent’ registered the Domain Names to sell, rent or otherwise transfer the Domain Names to the Complainant or its competitors. As such, the Respondent’s actions indicate bad faith registration of the Domain Names.
The Panel also finds that it is more likely than not that the Respondent used the Domain Names in bad faith.
It is a well-established view among UDRP panelists that “automatically” generated material appearing on a website connected to the disputed domain name supports a finding of bad faith use under paragraph 4(b)(iv) of the UDRP. “It would normally be sufficient to show that profit or “commercial gain” was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.”15 Based on the record, the Respondent used the “www.” and “www. hotel” websites connected to the corresponding Domain Names to display advertising of Complainant’s and third parties’ services, and it is likely that the Respondent profited from that arrangement. As a result, the Panel finds that the Respondent used these Domain Names is bad faith.
Furthermore, the Respondent’s proposal to transfer and for a “reasonable price” in response to the Complainant’s cease and desist letter, is evidence of use in bad faith.16 The Respondent’s subsequent invitation to Internet users to make “…offers and suggestions for this [sic] Domain Names” appears to be an invitation to make offers to purchase the Domain Names. Such offers to sale are evidence of bad faith use of the , , , Domain Names contemplated by paragraph 4(b)(i) of the Policy.
Finally, the Panel also finds that the Respondent used the domain name in bad faith. It is well-established by UDRP panelists that passive holding, “does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.”17 Here, the domain name resolves to a default page stating “Sorry! This site is not currently available,” so the Respondent holds this domain name passively. The Panel finds that such passive holding amounts to use in bad faith because the domain name includes the well-known ACCOR trademark; the Respondent provided no evidence or any actual or contemplated good faith use of the domain name; originally (and in bad faith) resolved to a pay-per-click website, which can be resumed at any time; the Respondent did not dispute the Complainant’s allegations of bad faith registration and use; and the Respondent provided a false mailing address in breach of its registration agreement.
Because the Panel finds that the Complainant proved the Respondent registered and used the Domain Names in bad faith, the Respondent satisfied the requirement of the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names , , , , , be cancelled.
Olga Zalomiy
Sole Panelist
Dated: April 17, 2012
1 See, paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 See, paragraph 4.6 of the WIPO Overview 2.0.
3 See, paragraph 1.2 of the WIPO Overview 2.0.
4 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
5 See, paragraph 1.9 of the WIPO Overview 2.0.
6 See, paragraph 1.2 of the WIPO Overview 2.0.
7 See, paragraph 2.1 of the WIPO Overview 2.0.
8 See, paragraph 2.1 of the WIPO Overview 2.0.
9 Research In Motion Limited v. BLACKBERRY World,WIPO Case No. D2006-1099; See also Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
10 Paragraph 2.6 of WIPO Overview, 2.0.
11 Id.
12 See, eDreams, Inc. v. Private Whois,WIPO Case No. D2009-1507; See also, Jean Heitz v. Haberfiled Naturopatic Centre/Rosa Ghidella,WIPO Case No. D2011-1471.
13 See, Accor v. JE Jeong, WIPO Case No. DCO2010-0040; Accor v. Maixueying Jokemine, WIPO Case No. D2010-2233; Accor S.A. v. , WIPO Case No. D2007-1257.
14 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. , WIPO Case No. D2000-0163; See also General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.
15 See, Paragraph 3.8 of WIPO Overview 2.0.
16 See, Benneton Group ApA v. Domain for Sale,WIPO Case No. D2001-1498.
17 Paragraph 3.2 of WIPO Overview 2.0.
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