The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Lucy Star of Croydon, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On August 1, 2018, GoD, LLC 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2018.
The Center appointed Simon Minahan as the sole panelist in this matter on September 19, 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 following details, in the absence of any evidence from the Respondent, are found as matters of fact for the purpose of this Complaint.
The Complainant, Accor, operates more than 4,000 hotels in 95 countries worldwide and around 570,000 rooms, from economy to upscale. The group includes hotel chains such as PULLMAN, NOVOTEL, MERCURE, GRAND MERCURE. In particular the GRAND MERCURE chain has 48 hotels in 12 countries, of which 8 are in Australia. It has previously operated a property in Hobart, Tasmania, Australia; although it no longer does.
The Complainant is the owner of the following Trademark Registrations:
- Australian trade mark MERCURE No. 612263, registered on March 28, 1996, duly renewed, covering services in class 42;
- International trade mark GRAND MERCURE No. 900839, registered on September 29, 2006 (duly renewed) and designating Australia, covering goods and services in class 43;
- International trade mark MERCURE No. 403334, registered on December 14, 1973 (duly renewed) and covering goods and services in classes 8, 16, 21, 39, 41 and 42.
In addition, the Complainant and affiliates operate, among others, the following domain names reflecting its trade marks in order to promote its services:
- , registered on April 6, 1996;
- , register on October 25, 2004.
The Complainant’s trademarks are well-known and have been found to be so in previous panel decisions:
Accor v. DreamHost, Long Giang,WIPO Case No. D2014-0196; Accor and SoLuxury HMC v. “m on”,WIPO Case No. D2012-2262; Accor and SoLuxury HMC v. Fundacion Private Whois,WIPO Case No. D2012‑1654; Accor v. Mao Jian Ting,WIPO Case No. D2012-0189; Accor v. Domainjet, Inc.,WIPO Case No. D2012-0038; Accor v. Huajicani Hujiancai,WIPO Case No. D2014-0189; Accor v. Reap Usd,WIPO Case No. D2016-0177.
The disputed domain name , is currently directed towards a webpage entitled “Grand Mercure Hobart” with a description of the hotel in Hobart as well as an article / advertisement for sex toys. There is also an email server associated with the domain name address which enlivens concerns about potential phishing.
The disputed domain name was registered September 8, 2015. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to its MERCURE and GRAND MERCURE trade marks; (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1)).
The Complainant contends that the incorporation of a well-known trade mark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a complainant’s registered trademark, citing:
L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113.
It also contends that the fact that a geographical term is added after the trade marks, such as the name of the city of “Hobart” in the disputed domain name, does not dispel the likelihood of confusion. It is contended that, on the contrary, said addition of the city name enhances possible confusion, since the Complainant owns hotels in Australia and used to own a Mercure hotel in said city.
It further contends that the ccTLD is to be disregarded when considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks, citing:
Zynga Inc. v. Graytech Hosting Pty Ltd, Annette Nazarova,WIPO Case No. DAU2016-0042; and Jaguar Land Rover Limited v. F.W.D. Vehicles Pty. Ltd. and High Ground Vehicles Pty. Ltd.,WIPO Case No. DAU2016-0038.
The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)).
The Complaint says that as the Respondent is not affiliated with the Complainant and is in not authorized by the Complainant to use and register its MERCURE and GRAND MERCURE trade marks, which long predated the registration of the disputed domain name, she has no prior rights or legitimate interest in the disputed domain name.
The Complainant contends, and cites previous decisions in support of the contention, that in the absence of any license or permission from the Complainant to use a famous or widely-known trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed, citing:
Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The domain name was registered or is subsequently being used in bad faith; (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)). 1) Registration in bad faith
The Complainant contends that it is implausible that the Respondent was unaware of the Complainant and its famous trade marks when she registered the disputed domain name and that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trade mark rights and, nevertheless registered a domain name in which she had no rights or legitimate interests and that the actual or inferred knowledge of the Complainant’s trade marks at the time of registration of the disputed domain name proves bad faith registration, citing:
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; ALSTOM v. Domain Investments LLC,WIPO Case No. D2008-0287; and, NBC Universal Inc. v. S / Michele Dinoia,WIPO Case No. D2007-0077. 2) Use in bad faith
The Complaint contends that:
(a) in the absence of any license or permission from the Complainant to use its widely known trade marks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed; citing:
Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
(b) as the disputed domain name is almost identical to the Complainant’s trade marks, thelikelihood of confusion from the registration and use of the disputed domain name is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to the Respondent’s site, citing:
MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012‑1765; E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095.
(c) there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company citing:
OLX, Inc. v. J D Mason Singh,WIPO Case No. D2014-1037; The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093
(d) use of the site to advertise sex toys and divert the Complainant’s business, and inhibit the Complainant’s use of its trade marks, is also contended to be evidence of bad faith. B. Respondent
The Respondent did not file any Response. 6. Discussion and Findings
In addition to the findings set out above in Factual Background, the Panel finds as follows. A. Identical or Confusingly Similar
The Panel finds the disputed domain name wholly incorporates the Complainant’s trade marks and accordingly considers the disputed domain name to be identical or confusingly similar to the Complainant’s MERCURE and GRAND MERCURE trade marks. In this regard, the Panel accepts each of the Complainant’s uncontested contentions outlined above and notes the previous decisions cited in support. B. Rights or Legitimate Interests
The Panel finds the Respondent has not made a bona fide use, or a legitimate noncommercial or fair use, and has not been commonly known by the disputed domain name. Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name. The Panel accepts each of the Complainant’s uncontested contentions outlined above in this regard and notes the previous decisions cited in support. C. Registered or Subsequently Used in Bad Faith
The Panel finds the Complainant’s trade marks to be well-known and significantly predate the disputed domain name’s registration date, therefore the disputed domain name was registered in bad faith. Furthermore, the use of the disputed domain name resolving to a website with a description of the hotel and advertisement for sex toys and the fraudulent phishing scheme support a finding of bad faith. Accordingly, the Respondent registered and is using the disputed domain name in bad faith. The Panel accepts each of the Complainant’s uncontested contentions outlined above in this regard and notes the previous decisions cited in support. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Simon Minahan
Sole Panelist
Date: October 18, 2018
Full & Egal Universal Law Academy