The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is Pawel Furmanczyk, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with Papaki Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2019. On July 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2019 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 July 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 2019.
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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. The Respondent sent email communications on July 30, 2019 and August 2 and 5, 2019 to settle the dispute. The Center sent the Commencement of Panel Appointment Process on September 23, 2019.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on October 3, 2019. 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 Accor is a world leading hotel operator that owns several registrations for the trademarks ACCOR and ACCOR HOTELS, including the following:
- European Union Trade Mark ACCOR No. 006159248, filed on August 1, 2007, registered on December 27, 2012 covering goods and services in classes 9, 16, 35, 36, 39 and 43;
- European Union Trade Mark ACCOR HOTELS No. 014032643 filed on May 6, 2015, registered on October 29, 2015, covering goods and services in classes 3, 9, 16, 25, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- International trademark ACCOR No. 742032 registered on August 25, 2000 designating inter alia China, Germany, Egypt, Italy, Russia for services in class 38;
- International trademark ACCORHOTELS No. 1103847 registered on December 12, 2011 designating inter alia Australia, China, Russia, Singapore, the United States and covering services in classes 35, 39 and 43.
In addition, the Complainant promotes its services using the domain names registered on February 22, 1998 and registered on April 29, 1998.
The disputed domain name was registered on June 30, 2019 and currently resolves to a webpage under construction. 5. Parties’ Contentions A. Complainant
The Complainant claims that since it was founded in 1967, Accor acquired considerable reputation and goodwill worldwide. Accor Hotels operates more than 4.500 hotels in 111 countries with about 700.000 rooms, from economy to upscale, including three hotels in Greece with more than 600 rooms.
In essence, the Complainant claims that the disputed domain name is confusingly similar to the trademarks ACCOR and ACCOR HOTELS in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.
More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademarks ACCOR or ACCOR HOTELS or to seek registration of any domain name incorporating said trademarks.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions but sent email communications to settle the dispute amicably. However, in view of the Respondent’s silence to sign the form for the transfer of the disputed domain name, the proceedings continued. 6. Discussion and Findings 6.1 Standard Settlement Form
Prior to the appointment of the Panel, the Complainant filed a WIPO Standard Settlement Form signed by the Parties whereby the disputed domain name should be cancelled. Subsequently, the Complainant sent a communication to the Center indicating that it would like to proceed to the transfer of the disputed domain name (as requested in the Complaint) and not to its cancellation, for which purpose it indicated that it would “revert to the Respondent in order to have the form correctly signed in order to request the transfer of the domain name.” At the Complainant’s request, the Center suspended the proceedings until September 6, 2019 for purposes of settlement discussions concerning the disputed domain name. In view of the Respondent’s silence to sign the form for the transfer of the disputed domain name, at the Complainant’s request, the Center ordered that the present proceeding be reinstituted as of September 6, 2019.
Since the Standard Settlement Form Agreement provides that it “is not intended to be an agreement in itself, but only to summarize the essential terms of the Parties’ separate agreement for purposes of Register action”, the Panel is prepared to accept that in absence a separate agreement between the Parties confirming that the disputed domain name should be cancelled and in view of the express request from the Complainant that the disputed domain name should be transferred to the Complainant, the Panel accepts that the conflict remains unsettled and that it should proceed to resolve the dispute by issuing a decision on the merits of the case. 6.2 Discussion
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely 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 Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the trademarks ACCOR and ACCOR HOTELS.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case, the disputed domain name contains the Complainant’s trademark ACCOR in its entirety. The Panel considers that the addition of the words “hostels” and “group” are insufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.
Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of terms (such as “hostels” and “group”) would not prevent a finding of confusing similarity under the first element.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark ACCOR in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to use or register the trademark ACCOR as a domain name or for any other reason.
The Panel considers that the fact that the site to which the disputed domain relates is under construction may be assimilated to an inactive page which means that the Respondent is not using the disputed domain name in relation to a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not substantially responded and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complaint also succeeds on the second prong. C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name that contains a third party’s trademark with the terms “hostels” and “group” which relate to the Complainant and/or its related business. The Respondent could not ignore the existence of the ACCOR and ACCOR HOTELS trademarks when it registered the disputed domain name on June 30, 2019 because ACCOR is the name and trademark of the Complainant, which were extensively registered and used by the Complainant many years before that date. Therefore it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark ACCOR.
Therefore, noting the nature of the disputed domain name, the misappropriation of the ACCOR trademark (being well-known) as a domain name constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,WIPO Case No. D2010-1277 and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating ACCOR was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website.
The descriptive words “hostels” and “group” in the disputed domain name clearly strengthen the idea of an affiliation with the Complainant. Customers seeking a room in a hotel or in a hostel any place in the world would be liable to enter the disputed domain name site expecting to contact the Complainant.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank, under construction or coming soon pages) would not prevent a finding of bad faith under the passive holding doctrine (section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Given that the disputed domain name is confusingly similar with the Complainant’s name and trademark ACCOR, the Panel finds that it is not possible to conceive any circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
Finally, the Complaint also succeeds on the third prong. 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.
Miguel B. O’Farrell
Sole Panelist
Date: October 15, 2019
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