The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / JORGE MARQUEZ, Mexico.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 16, 2021, 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 November 16, 2021 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 November 17, 2021.
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 November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 16, 2021. 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 BackgroundThe Complainant is a company incorporated in France founded in 1967 that operates a global hospitality business with more than 4,500 hotels in 111 countries around the world including includes notable brands such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure and Ibis.
The Complainant holds a portfolio of trademark registrations that include the trademark No. 2838984 for the mark ACCOR registered in the United States in classes 39 and 42 on May 4, 2004 as well as United States Trademark No. 6136529, for the mark ALL registered on August 25, 2020 and covering services in classes 35 and 41 as well as International Trademark No. 1472728, for a stylized version of the marl ALL registered on December 24, 2018, designating inter alia, Australia, China, European Union, Mexico, Russian Federation, United Kingdom and United States, covering services in class 35, 36, 38, 39, 41, 42, 43 and 44.
The Complainant owns several domain names that incorporate its trademarks including
The Disputed Domain Name
The Complainant cites its United States trademark No. 2838984 for the trademark ACCOR registered on May 4, 2004 and other registrations around the world, for the mark ACCOR as prima facie evidence of ownership. The Complainant also cites United States Trademark No. 6136529, for the mark ALL registered on August 25, 2020 as evidence of rights in that mark.
The Complainant submits that the mark ACCOR and the mark ALL are well-known globally and that its rights in that marks predate the Respondent’s registration of the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, amongst other reasons, it resolves to an inactive webpage and that, therefore, the Disputed Domain Name was not used in any type of legitimate business or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “the composition of the disputed domain name being virtually identical to Complainant’s well-known trademarks, clearly demonstrates Respondent’s knowledge of Complainant’s rights and its activities”. The Complainant also alleges that “an e-mail server has been configured on the disputed domain name and there is a high risk that Respondent is engaged in a phishing scheme”.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ACCOR in numerous geographies including the United States and in many other jurisdictions. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ACCOR trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “all” (which is also a textual reproduction of the Complainant’s stylised trademark ALL); (b) followed by a hyphen; (c) followed by an exact reproduction of the Complainant’s trademark ACCOR; (d) followed by a hyphen; (e) followed by the word “group”; (f) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “all-accor-group”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or words, in this case, the words “all” and “group”. (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
The Panel finds that the addition of the words “all” and “group” and the hyphens does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Many previous UDRP panels have recognized that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” (See: WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) its registrations of trademarks predate the Respondent’s registration of the Disputed Domain Name; (ii) the Respondent has not been commonly known by the name “accor” or “all”; (iii) the Respondent is making unlicensed use of two of the Complainant’s trademarks which cannot reasonably be a coincidence; and (iv) the Respondent is not 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 Complainant’s trademarks because that “it is not possible to conceive a plausible 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 Complainant’s rights.”
The Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Further, where the composition of the Disputed Domain Name identifiably contains the Complainant’s entire trademark, or in this case, two trademarks owned by the Complainant, the potential for phishing or fraud attendant on a financial services business, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”); and Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”) and WIPO Overview 3.0, section 2.5.1).
The passive holding of the Disputed Domain Name does not give rise to any rights or legitimate interests (see Segway Inc. v. Domains By Proxy, LLC / Arthur Andreasyan, NIM,WIPO Case No. D2016-0725; WIPO Overview 3.0, section 2.5.3).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy requires that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances to be construed as evidence of both of these conjunctive requirements.
The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, it is most improbable that the Respondent might have registered the Disputed Domain Name without knowing of the Complainant’s trademarks ALL and ACCOR. The word “group” is a merely dictionary term that corresponds to the Complainant’s corporate structure. This Panel finds that the Respondent was aware of the Complainant’s trademarks ALL and ACCOR when registering the Disputed Domain Name. Numerous previous UDRP panels have found that the trademark ACCOR is well-known (see Accor v. Domains by Proxy, Inc./Ostrid Company, WIPO Case No. D2008-0707 (“the trade mark ACCOR is well-known”); Accor v. Accor and SoLuxury HMC v. “m on”,WIPO Case No. D2012-2262 (“The trademarks SOFITEL, ACCOR and NOVOTEL are worldwide well-known trademarks, related to hotel and restaurant services”); Accor v. Huajicani Hujiancai,WIPO Case No. D2014-0189 (“ACCOR, which is a well-known trademark”); Accor v. DreamHost, Long Giang,WIPO Case No. D2014-0196 (“Complainant’s ACCOR trademark and ACCOR HOSPITALITY trademark were highly well-known”).
In addition, a gap of several years between registration of the Complainant’s trademarks and the Respondent’s registration of the Disputed Domain Name (containing a registered trademark owned by the Complainant) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in the trademark ACCOR predate any rights that could possibly flow from the Respondent’s registration of the Disputed Domain Name by some 18 years.
On the issue of use, the Complainant’s uncontested evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding.
There is also evidence that a DNS ‘mail exchange’ (MX) record has been activated, allowing email to be routed to a mail server, in further evidence of bad faith under the policy in view of the increased risk of fraud or phishing (see: Drägerwerk AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES,WIPO Case No. D2020-3167 (“Furthermore, the certificate and the MX record relating to the disputed domain name suggest that it is or was possibly used for email communication. Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent email scheme, namely to impersonate the Complainant and extract personal or financial data from persons believing that the communication comes from the Complainant”). Seeking to obtain personal information, or sensitive financial information, of potential customers of the Complainant, is an activity that falls into a category of conduct known as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see WIPO Overview 3.0, section 3.1.4).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademarks ALL and ACCOR and incorporated them in the Disputed Domain Name without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademarks for the likely purpose of a phishing scheme.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Nicholas Weston
Sole Panelist
Date: December 20, 2021