The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Domain Management MIC, Syed Hussain of New Jersey, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On August 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2018.
The Center appointed Jane Lambert as the sole panelist in this matter on September 4, 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 is a group of companies that own, manage or franchise more than 4,000 hotels in over 100 countries including the United States. Its holding company is Accor SA the shares of which are quoted on the Paris stock exchange.
It has registered the word “Accor” as a trade mark for various goods and services around the world. In the United States that mark is registered under registration number 2838984, for services in classes 39 and 42 registered on May 4, 2004 and with effect from May 4, 2001.
The disputed domain name includes the suffix “.group” which is a new generic Top-Level Domain (“gTLD”). The Respondent appears to have been the subject of around 20 complaints including:WIPO Case No. D2018-1189, Klarna AB v. Syed Hussain, Domain Management MIC;WIPO Case No. D2017-0998, AXA SA v. Contact Privacy Inc. / Syed Hussain, Domain Management;WIPO Case No. D2013-1038, Onmobile USA LLC v. Domain Management, Syed Hussain;WIPO Case No. D2016-2354, Bayer AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Syed Hussain, IBN7 Media Group.
The Complainant’s lawyers sent a letter before submission of the Complaint to the Respondent on June 27, 2018 requesting the transfer of the disputed domain name. The Respondent offered to sell the disputed domain name for USD 1,250 “or a bit less” in an email to the principal of the Complainant’s law firm dated June 28, 2018.
The disputed domain name was registered on April 24, 2018. The Complainant submitted evidence that it previously dynamically redirected to various websites. Currently, the disputed domain does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The Complainant claims the transfer on the following grounds:
1. The disputed domain name is identical to a trade mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name was registered and is used in bad faith.
As to the first ground, the Complainant relies on the United States trade mark mentioned in the factual background and submits that the disputed domain name is identical to the mark if the gTLD “.group” is disregarded. The elements “Accor” and “.group” are entirely descriptive of the Complainant. Internet users seeking information on the Complainant, its business or hotels are bound to suppose that the disputed domain name was registered, and will link to pages posted, by the Complainant. At the very least it is confusingly similar.
As to the second, the Complainant denies that the Respondent has any connection with the Complainant or has ever been known by the disputed domain name and there is no evidence of a legitimate commercial activity.
As to the third, the Complainant submits that it is implausible for the Respondent to have registered the disputed domain name in ignorance of the Complainant’s trade marks. The Complainant does so much business in the United States and the rest of the world that it is hard to ignore. The Respondent breached his warranty that the registration of the disputed domain name would not infringe another party’s trade mark or other intellectual property right. The Respondent has offered to sell the disputed domain name for far more than he paid for it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the holder of a disputed domain name to submit to a mandatory administrative proceeding in the event that a third party asserts that
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the disputed domain name holder has no rights or legitimate interests in respect of the same; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, a complainant must prove that each of these three elements is present. A. Identical or Confusingly Similar
The Panel finds that the first of those elements has been proved.
If the suffix “.group” is disregarded the disputed domain name is identical to United States trade mark registration number 2838984.
As stated in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. B. Rights or Legitimate Interests
The Panel is satisfied that the second element is proved.
The Complainant has asserted that it has no connection with the Respondent and that it has found no grounds upon which the Respondent can claim rights or a legitimate interest in the disputed domain name. It is therefore up to the Respondent to prove otherwise and by not responding to the Complaint he has failed to do so. See section 2.1 of the WIPO Overview 3.0.
Moreover, noting the volume of business that the Complainant transacts in the United States under the ACCOR mark and the extent of its registered trade mark portfolio, it is hard to see how any business or other activity could lawfully be conducted under the disputed domain name or anything like it. C. Registered and Used in Bad Faith
The Panel holds that the third element is proved.
Paragraph 4(b) of the Policy provides a number of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The first of those circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name. The Respondent replied to the letter of claim by offering to sell the disputed domain name for USD 1,250 “or a bit less”. As it would have cost very little to register the disputed domain name, an offer to sell it for USD 1,250 (or anything approaching that sum) falls full square within that circumstance. In the absence of any explanation as to why the Respondent made that offer it can be inferred that he registered the disputed domain name primarily for the purpose of selling it to the Complainant at many times his likely out-of-pocket costs.
That is enough to dispose of the proceeding but as the Respondent has been the subject of 20 complaints and as the Panel has found that the disputed domain name is identical to the Complainant’s mark it is arguable that the second and fourth of those circumstances applied too. The Panel also accepts the Complainant’s submission that the Respondent must have been aware of its trade mark and has registered and used the disputed domain name in bad faith. 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.
Jane Lambert
Sole Panelist
Date: September 19, 2018
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