The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“US”) / Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with enom389 Incorporated
(the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2017. On November 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2017 and December 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 8, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 12, 2018. 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, founded in 1967, operates economic and mid-scale hotels, and is a major player in upscale and luxury hospitality services.
The Complainant has rights in numerous trademark registrations in the term ACCOR in many jurisdictions throughout the world, including in Romania, for instance:
- International trademark ACCOR, No. 727696, registered on December 28, 1999 (renewed), covering goods and services in classes 16, 39, 42;
- US trademark ACCOR, No. 2838984, registered on May 4, 2004 (renewed), covering services in classes 39 and 42.
The trademarks are registered in a number of classes, among these, “paper and paper articles, cardboard and goods made thereof; printed matter, newspapers and periodicals, books” (Class 16); “transport of passengers or goods; packaging of goods; travel information (tourism and travel agencies, booking of seats)” (Class 39) and “hotel services” (Class 42).
The Respondent appears to be a resident of Romania and, according to the WhoIs database, registered the disputed domain name on March 15, 2017.
The Complainant provided evidence that the Respondent has used the disputed domain name to redirect Internet users to a pay-per-click website with sponsored links and that the disputed domain name was offered for sale on Sedo Marketplace.
On May 30, 2017, the Complainant’s lawyers sent a cease-and-desist letter to the Respondent asserting its trademark rights and requesting the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s cease-and-desist letter. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. The Complainant has submitted evidence that it is the owner of numerous domain names consisting of or including the ACCOR mark.
With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name incorporates the Complainant’s ACCOR trademark in its entirety and only differs from the Complainant’s ACCOR trademark by the addition of the descriptive terms “services” and “direct”.
The Complainant argues that the addition of these terms do not serve to distinguish the disputed domain name in any material way.
The Complainant further argues that it is generally accepted that generic Top-Level Domain (“gTLD”) suffixes, such as “.com”, “.net”, “.org”, are irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as they are functional elements.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent cannot assert that, prior to having notice of this dispute, it was using, or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, as the disputed domain name is confusingly similar to the Complainant’s ACCOR trademark and redirects to a pay-per-click website with sponsored links;
- the Respondent cannot conceivably claim that it is commonly known by the Complainant’s trademark, in accordance with paragraph 4(c)(ii) of the Policy;
- the Respondent is neither affiliated with the Complainant nor authorized or licensed to use the ACCOR trademark or seek the registration of a domain name incorporating its ACCOR trademark;
- the Respondent has no prior rights or legitimate interests in the disputed domain name as the ACCOR trademark has been registered prior to the registration of the disputed domain name;
- the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to paragraph 4(c)(iii) of the Policy, as there is strong evidence that the disputed domain name resolves to a pay-per-click website with sponsored links;
- the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it;
- the Respondent did not reply to the Complainant’s cease-and-desist letter.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
the Complainant’s ACCOR trademark is highly distinctive and famous throughout the world;
- given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s ACCOR trademark at the time of registration of the disputed domain name in 2017;
- the Respondent’s use of the disputed domain name for a pay-per-click website containing sponsored links to websites of third parties constitutes strong evidence of bad faith;
- the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this case, the disputed domain name only differs from the Complainant’s trademarks by the addition of the descriptive terms “services” and “direct”.
The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant’s trademark and in itself insufficient to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The Domain Name consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the Domain Names from the Complainant’s DROPBOX marks and the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.9 of WIPO Overview 3.0).
Finally, it has been long established under the UDRP decisions that the specific gTLD designation such as “.com”, “.net”, or “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ACCOR in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has asserted that it never licensed or permitted the Respondent to use its ACCOR trademark, that the Respondent has no trademark rights that correspond to the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided strong evidence that the disputed domain name was being used for a pay-per-click website with sponsored links and that therefore the Respondent was not using the disputed domain name in a fair manner, but rather was seeking to unfairly exploit the Complainant’s goodwill and reputation in order to generate click-through revenues.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
The Panel therefore concludes that the Complainant has also satisfied its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s ACCOR mark is highly distinctive and famous throughout the world, including in Romania, where the Respondent is based.
It is therefore inconceivable that the Respondent did not have knowledge of the Complainant’s ACCOR trademark at the time of registration of the disputed domain name in 2017.
As the disputed domain name reproduces the mark in its entirety with the mere addition of the descriptive terms “services” and “direct”, there is also sufficient reason to assume that the Respondent has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Based on the record in this proceeding there is also strong evidence that the Respondent used the disputed domain name for a pay-per-click website with sponsored links.
This justifies the conclusion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s ACCOR mark as to the source, sponsorship, affiliation, or endorsement of these websites in accordance with paragraph 4(b)(iv) of the Policy.
The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the Complainant’s distinctive ACCOR mark.
Furthermore, because the disputed domain name resolves to a pay-per-click landing page with sponsored links, the disputed domain name appears designed to attract Internet users who are looking for the Complainant’s ACCOR hotel services, appears to cause confusion with the Complainant’s marks and websites and to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites, and do all of these things for commercial gain because the Respondent profits from the pay-per-click revenue generated by the website (see Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096; and Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator,WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; and Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026, which confirm that bad faith is evidenced where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights).
On the basis of the evidence put forward by the Complainant, the Panel therefore also concludes that Complainant has satisfied its burden under 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 transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: January 26, 2018
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