The Complainants are Accor SA and SoLuxury HMC, France, represented by Dreyfus & associés, France.
The Respondent is Comandante Matias Barbarroja, BedsBrokers, Spain. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 2019, 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. On July 24, 2019, the Center received an email in Spanish from the Respondent, indicating, among other things, that he is willing to transfer the disputed domain names. On July 25, 2019, the Center sent an email regarding possible settlement to the Parties. On July 31, 2019, the Center sent the Notification of Suspension (before commencement) to the Parties upon the Complainants’ request for suspension on the same date. The proceeding was further suspended on August 27, 2019, on October 3, 2019, on October 31, 2019, on December 3, 2019, and eventually on January 6, 2020, until February 5, 2020. During this period of suspension, the Center received several informal email communications from the Respondent. No settlement was reached between the Parties. On February 4, 2020, the Complainants requested the reinstitution of the proceeding, and filed an amended Complaint. 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 February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. No formal Response was filed with the Center. On March 4, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Torsten Bettinger as the sole panelist in this matter on March 10, 2020. 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 SA, is a large international hotelier, based in France, and operates about 4,500 hotels in more than 100 countries around the world, ranging from budget hotels to upscale establishments. The Complainant SoLuxury HMC is a wholly owned subsidiary of Accor SA. The Complainants’ hotel chains include IBIS Hotels, MERCURE hotels, NOVOTEL hotels and SOFITEL hotels. In Spain, the Complainants operate around 90 hotels including 40 IBIS hotels, nine MERCURE hotels and eight NOVOTEL hotels. The Complainants own the following registered marks: - European Union Trade Mark IBIS No. 001527720, filed on February 18, 2000 and registered on June 6, 2001, covering goods and services in classes 16, 39 and 42; - European Union Trade Mark M MERCURE No. 006277032, filed on September 13, 2007 and registered on September 1, 2008, covering services in classes 39, 41 and 43; - International trademark MERCURE No. 429159, registered March 24, 1977, designating inter alia,Germany, Portugal and Spain and covering goods and services in classes 8, 16, 21 and 42; - European Union Trade Mark NOVOTEL No. 010429082 filed on November 18, 2011, registered on April 20, 2012 and covering services in class 43, - International trademark NOVOTEL No. 542032 registered on July 26, 1989, designating inter alia, Mozambique, Russian Federation, Spain, Viet Nam and covering services in class 42; - European Union Trade Mark SOFITEL No. 004303277 filed on March 22, 2005, registered on February 3, 2006, covering services in classes 35, 39, and 43; - International trademark SOFITEL No. 406255 registered on April 18, 1974, designating inter alia Spain, Italy, Viet Nam and covering goods and services in classes 1 to 42. The Complainants have registered and own the following domain names: - On March 8, 2019, the Complainants sent a cease-and-desist letters to the Respondent via the Registrar GoDaddy and via a “Domain Holder Contact Request Form” asserting its trademark rights and asking the Respondent to cease the use of the disputed domain names and to transfer them to the Complainants. The Respondent did not reply to these letters. The disputed domain names were registered on February 20, 2019 and used to initially resolve to online hotel reservation pages and then to redirect to a Tripexplorer website indicating “Page not found”. 5. Parties’ Contentions A. Complainants The Complainants contend that the disputed domain names are confusingly similar to their trademarks IBIS, MERCURE, NOVOTEL and SOFITEL, the Respondent has no rights or legitimate interests in the disputed domain names and the Respondent registered and is using the disputed domain names in bad faith. With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainants submit that the respective disputed domain names reproduce the Complainants’ trademarks IBIS, MERCURE, NOVOTEL, and SOFITEL in their entirety and that these trademarks are famous. The Complainants argue that the incorporation of a trademark in its entirety and its combination with descriptive and geographical terms such as “hotel”, “museo” (the Spanish term for “museum”), “Bogota”, “Buenos Aires”, “Victoria”, “regia”, and “Recoleta” are sufficient to establish that the disputed domain names are identical or confusingly similar to the Complainants’ trademarks. The Complainants further state the full inclusion of the Complainants’ trademarks in combination with these terms enhances the false impression that the disputed domain names are somehow officially related to the Complainants and their hotels. With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the Complainants submitted that: - the Respondent is neither affiliated with the Complainants in any way nor has he been authorized by the Complainants to use and register their trademarks, or to seek registration of the disputed domain names; - the Respondent has no prior rights or legitimate interests in the disputed domain names; - the registration of the trademarks IBIS, MERCURE, NOVOTEL, and SOFITEL preceded the registration of the disputed domain names for years; - the Respondent is not commonly known by any of the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy; - the Respondent cannot assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain names, or a name corresponding to the disputed domain names, 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 names all resolve to hotel online reservation pages which are presented as being the official reservation pages of corresponding Complainants’ hotels “Ibis Bogota Museo Hotel”, “Mercure Bogotá”, “BH Zona Financiera”, “Mercure Bogota BH Retiro”, “Novotel Buenos Aires Hotel”, “Sofitel Bogota Victoria Regia”, and “Sofitel Buenos Aires Recoleta”. The use of the disputed domain names to redirect Internet users to a “Tripexplorer” allowing Internet users to book hotels cannot be considered to be a bona fide offering of goods or services. Finally, with regard to the disputed domain names having been registered and being used in bad faith, the Complainants argues that: - it is implausible that the Respondent was unaware of the Complainants when he registered the disputed domain names as the Complainants are well-known throughout the world including Spain where the Respondent is located; - the Complainants’ trademark rights predate the registration date of the disputed domain names by many years; - the disputed domain names resolve to hotel online reservation pages which are presented as being the official online pages of the Complainants’ corresponding hotels: Ibis Bogota Museo Hotel, Mercure Bogotá BH Zona Financiera, Mercure Bogota BH Retiro, Novotel Buenos Aires Hotel, Sofitel Bogota Victoria Regia and Sofitel Buenos Aires Recoleta. - the Respondent was using the disputed domain names to deceive the Complainants’ potential clients by first directing them to a webpage related to the Complainants’ hotels and then rerouting them to “Tripexplorer”, which listed numerous other hotels located in the same region as the Complainants’ hotels; - the Respondent’s use of the disputed domain names will likely lead to confusion among Internet users as to the Complainants’ sponsorship of or affiliation with the resulting websites and that such use is further evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy; - the Respondent’s tries to benefit from the fame of the Complainant’s marks and its primary motive in registering and using the disputed domain names was to capitalize on or to otherwise take advantage of the Complainants’ trademark rights; - given the renown and goodwill of the Complainants’ trademarks worldwide, there cannot be any actual or contemplated good faith use of the disputed domain names by the Respondent or a third party unrelated to the Complainants, as they would invariably result in misleading diversion and unfair taking advantage of the Complainants’ rights. B. Respondent The Respondent did not reply to Complainants’ contentions. Rather, the Respondent sent several email communications in Spanish between July 24, 2019 and October 3, 2019, indicating, among other things, his willingness to transfer the disputed domain names. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainants have provided substantial evidence of their trademark rights in the marks IBIS, MERCURE, NOVOTEL and SOFITEL, which all precede the Respondent’s registrations of the disputed domain names. 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 trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Here the disputed domain names There is consensus among the UDRP panels that the addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark 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; see also section 1.8 of WIPO Overview 3.0). Moreover, it has been long established by previous UDRP decisions that the addition of geographic terms or elements will not generally distinguish a domain name from a complainants’ included trademark. Geographic terms are usually viewed as descriptive, potentially referring to locations where the Complainants’ goods or services may originate or be sold, and such terms do not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name (see for example SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308). Finally, it is well accepted under the UDRP case law that the specific Top-Level Domain (“TLD”) designation such as “.website”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable TLD suffix may itself form part of the relevant trademark (see WIPO Overview 3.0, section 1.11). For the foregoing reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s corresponding trademarks IBIS, MERCURE, NOVOTEL, and SOFITEL in which the Complainant has exclusive rights. B. Rights or Legitimate Interests A respondent may establish its rights or legitimate interests in a 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 Complainants have asserted that they never permitted the Respondent to use their IBIS, MERCURE, NOVOTEL, and SOFITEL trademarks and that the Respondent has no rights or legitimate interests to register and use the disputed domain names. Furthermore, the Complainants asserted that the disputed domain names initially all resolved to hotel online reservation pages which are presented as being the official reservation pages of the corresponding Complainants’ hotels “Ibis Bogota Museo Hotel”, “Mercure Bogotá”, “BH Zona Financiera”, “Mercure Bogota BH Retiro”, “Novotel Buenos Aires Hotel”, “Sofitel Bogota Victoria Regia” and “Sofitel Buenos Aires Recoleta”, and that the disputed domain names now resolve to a Tripexplorer page indicating “Page not found”. These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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. WIPO Overview 3.0, section 2.1. The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. As there is also no evidence before the Panel that support the contrary to the Complainants’ allegation, the Panel therefore accepts the Complainants’ allegations as undisputed facts and concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii). 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 a 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. The Complainants hold trademark registrations for IBIS, MERCURE, NOVOTEL, and SOFITEL worldwide, including Spain, where the Respondent is apparently located. The Complainants’ trademarks predate the Respondent’s disputed domain names registrations by many years and are distinctive and well known. This and the fact that the disputed domain names comprise the Complainants’ respective trademarks IBIS, MERCURE, NOVOTEL, and SOFITEL in their entirety with the addition of the dictionary terms “hotel”, “regia”, and “museo”, as well as geographic terms make it inconceivable that that the Respondent coincidentally selected the disputed domain names without any knowledge of the Complainants or their IBIS, MERCURE, NOVOTEL, and SOFITEL trademarks. The Panel therefore concludes that the Respondent registered the disputed domain names in bad faith. The Complainants submitted evidence showing that the Respondent initially used the disputed domain names to redirect to websites containing online hotel reservation pages which are presented as the official online pages of the Complainants’ respective hotels “Ibis Bogota Museo Hotel”, “Mercure Bogotá BH Zona Financiera”, “Mercure Bogota BH Retiro”, “Novotel Buenos Aires Hotel”, “Sofitel Bogota Victoria Regia”, and “Sofitel Buenos Aires Recoleta”, and that later the disputed domain names redirected Internet users to a Tripexplorer website indicating “page not found”. Such use of the disputed domain names is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy. Furthermore, such use is likely to damage the Complainants’ business and reputation. The Respondent failed to submit a Response and to contest the Complainants’ allegations and also did not reply to the Complainants’ correspondence prior to the filing of the Complainant. Therefore, the Panel finds that the Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 names Torsten Bettinger
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Sole Panelist
Date: March 31, 2020
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