Complainant is ACCOR of Issy-Les-Moulineaux, France, represented Dreyfus & associés, France.
Respondent is Mohammad Reza Aghaei of Tehran, Islamic Republic of Iran. 2. The Domain Names and Registrar
The disputed domain names and are registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2018. On May 11, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On May 13, 2018, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on May 22, 2018.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 23, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2018. On June 18, 2018, the Center notified Respondent’s default.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 21, 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
Complainant is a company organized under the laws of France that belongs to the world leading hotel chains with numerous brands including IBIS.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Ibis”, inter alia:
- Word mark IBIS, World Intellectual Property Organization (WIPO), Registration No. 541432, Registration Date: July 17, 1989, Status: Active;
- Word mark IBIS, Iran Intellectual Property Office (IRIPO), Registration No. 123326, Registration Date: May 10, 2005, Status: Active
Moreover, Complainant has evidenced to be the owner of various domain names including its IBIS trademark, inter alia: (registered in 1993) and (registered in 2001) which redirect to active websites in order to promote Complainant’s hotel business, products and services.
Respondent, who according to the WhoIs information is a resident of Iran, registered both disputed domain names and on February 15, 2016, which as of the time of the rendering of this decision redirect to a typical “under construction” website. Complainant has provided evidence that at some point before the filing of this Complaint both disputed domain names either could not be reached on the Internet or redirected to a message: “For sale”.
In an attempt to settle this matter amicably, Complainant contacted both Respondent as well as the technical contact for the disputed domain names by registered cease and desist letter on June 24, 2016 and via email on June 29, 2016, requesting to transfer the disputed domain names voluntarily upon Complainant. On July 11, 2016 as well as on July 25, 2016, Respondent replied stating that both domain names were for sale and asked Complainant to submit a purchase offer. While Complainant requested by further email of October 25, 2016 to cancel both domain names, Respondent restated its message on a possible sale of both disputed domain names on October 26, 2016.
Complainant requests that the disputed domain names be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that it was founded in 1967 and today is the world leader in economic and mid-scale hotels as well as a major player in upscale and luxury hospitality service with more than 4,200 hotels in 95 countries worldwide under more than 20 different brands.
Complainant submits that the disputed domain names are confusingly similar to Complainant’s IBIS trademark as they reproduce Complainant’s trademark in its entirety, merely adding the descriptive word “hotel(s)”.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is not affiliated with Complainant in any way and has not been authorized to use and register Complainant’s trademarks or to seek registration of any domain names incorporating those marks, (2) Respondent obviously is not commonly known by Complainant’s trademarks which have been registered prior to the registration of both disputed domain names, (3) Complainant’s IBIS trademark is so well-known that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names which is also confirmed by the fact that the disputed domain names at some point lead to inactive pages either with no content whatsoever or with the message “For sale”, and (4) Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services nor has Respondent shown any intention of noncommercial or fair use thereof, but rather offered them to Complainant for sale.
Finally, Complainant argues that Respondent registered or is using the disputed domain names in bad faith since (1) Complainant’s trademarks are well-known throughout the world, including in Iran, demonstrating why it is implausible that Respondent was unaware of Complainant and its IBIS trademark when registering the disputed domain names, (2) the disputed domain names reproduce Complainant’s IBIS trademarks entirely, and, finally, (3) the passive holding of the disputed domain names does not preclude a finding of bad faith given the particular circumstances to this case including the strong reputation of Complainant’s trademarks in the absence of Respondent’s actual or contemplated good faith use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered or are being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names are confusingly similar to the IBIS trademark in which Complainant has rights.
The disputed domain names incorporate Complainant’s IBIS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-06961 ). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of generic or descriptive terms would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the generic or descriptive term “hotel(s)” in the disputed domain names does not dispel the confusing similarity arising from the incorporation of Complainant’s IBIS trademark therein.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s IBIS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the term “Ibis”. Finally, Respondent obviously has not used the disputed domain names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to offer them for sale to Complainant and not to redirect to any valid content on the Internet. In this context, the Panel also notes that UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.)
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has failed to substantively respond, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied Policy, paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered or Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and/or are being used by Respondent in bad faith.
As a general rule, panelists have found that the nonuse of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). 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 including e.g.: the degree of distinctiveness or reputation of complainant’s mark, the failure to respond or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
In the present case, Complainant contends, and Respondent has not challenged these contentions, that Complainant’s trademark IBIS enjoys considerable reputation. Given that Respondent has registered two domain names including Complainant’s IBIS trademark and, furthermore, a variety of other domain names including trademarks belonging to Complainant such as Hotel F1 and NOVOTEL (see the parallel proceeding in: Accor v. Mohammad Reza Aghaei,WIPO Case No. DIR2018-0011), the Panel is willing to accept the plausibility of Complainant’s line of argumentation that Respondent most likely was aware of Complainant and its IBIS trademark when registering the disputed domain names. Respondent, in turn, failed to submit any explanation as to why he still needed to rely on the inclusion of Complainant’s IBIS trademark in the disputed domain names. On the contrary, at some point before the filing of this Complaint Respondent apparently offered the disputed domain names for sale and reiterated its willingness to sell them to Complainant in the pre-procedural correspondence of July and October 2016. Such use of the disputed domain names, which are confusingly similar with Complainant’s IBIS trademark, is a clear indication that Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant at a price in excess of Respondent’s documented out-of-pocket costs. Such circumstances are evidence of registration and/or use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that Complainant has 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 and be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: June 25, 2018
1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and the UDRP, finds it appropriate to apply UDRP jurisprudencs, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian,WIPO Case No. DIR2018-0003.
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