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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Acortel s.l.
Case No. D2003-0711
1. The Parties
The Complainant is ACCOR, Evry, France, represented by Cabinet Ores, France.
The Respondent is Acortel s.l., San Antonio, Ibiza, Spain.
2. The Domain Name and Registrar
The disputed domain name <acorhotel.com> ("the Domain Name") is registered with Melbourne IT trading as "Internet Names Worldwide".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2003. On September 9, 2003, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On September 11, 2003, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2003.
The Center appointed Antony Gold as the sole panelist in this matter on October 13, 2003. 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 (erroneously calling itself the Respondent at a number of points in the Complaint) asserted and provided evidence in support of the following facts.
The Complainant owns approximately 4000 hotels in 90 countries worldwide. Its principal websites are at "www.accorhotels.com" and "www.accorhotel.com". The extract the Complainant provided from the Accor website at "www.accorhotels.com" substantiates the Complainant’s assertion that it runs many hotels throughout Spain (the Complaint asserts 46 hotels, the website suggests "more than 40 hotels"). The extracts from the website show that it provides search facilities for locating and booking the Complainant’s hotels. A statement at the foot of the home page asserts "3870 Accor hotels online (August 2003)".
The Complainant is the owner of numerous trademark rights throughout the world. In relation to its trade mark rights in Spain, the Complainant has adduced evidence of six trade marks comprising or including the word ACCOR, most of which are in classes which include hotel and restaurant services.
The Domain Name was registered on April 11, 2002. It is linked to an active website dealing with hotel reservations. The Complainant has produced an affidavit drawn by a bailiff on July 11, 2003, "about the whole situation" which is attached to the Complaint as Annex 3. The affidavit is in French and no certified translation into English is provided. However, it evidently explains in some detail the method used by the bailiff to access the Respondent’s website, the details of which are not material for the purposes of this decision.
On July 12, 2003, the representatives of the Complainant sent the Respondent a warning letter by registered post and e-mail asking him to transfer the Domain Name and to cut the link with the contested website. The e-mail version of the letter is believed to have reached the Respondent but the version set by post was returned. An e-mail reminder on behalf of the Complainant was sent on August 19, 2003. No reply was received to the e-mail.
5. Parties’ Contentions
The Complainant makes the following assertions in relation to the Domain Name;
A. That the Domain Name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights.
In support of this assertion, the Complainant sets out the nature and extent of its applicable trademark rights in Spain, set out in section 4 above, and makes the following points:
1. The trademark "ACCOR" has been reproduced by adding the generic
and descriptive term "hotel" and removing one c, which does not avoid
the risk of confusion between the Domain Name and the Complainant’s marks. The
public will think that the site at the Domain Name will lead to a website related
to ACCOR’s hotel chain especially if it knows that "www.accorhotels"
is the official website of the Complainant. In support of its contention that
the word "hotel" should be considered generic for these purposes,
the Complainant has referred to the WIPO case involving <otelsofitel.net>
(ACCOR, Société Anonyme à Directoire et Conseil de surveillance
v. Tigertail Partners, WIPO Case No. D2002-0625).
2. The Respondent is attempting to "typo-squat" on the Complainant’s
trademarks and domain name by its use of the domain name. In support of this
assertion, the Complainant has referred to the case relating to <mercurehotel.com>,
(ACCOR v. Marc Zibi, WIPO Case No. D2003-0561).
B. The Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this assertion, the Complainant makes the following points;
1. The Respondent is not affiliated with the ACCOR Corporation in any way.
2. The ACCOR Corporation has not authorised the Respondent to use and register its trademarks, or register any domain name incorporating its marks.
3. The Respondent has never used the term ACCOR in any way before or after the ACCOR Corporation developed its hotel chain. The Respondent is not known under the name "acorhotel" or any similar term.
4. The use of ACOR is an infringement of the Complainant’s trademarks and "is necessarily made in bad faith" (this point is more relevant to bad faith - see below).
5. The Respondent is not making any legitimate non-commercial or fair use of the Domain Name. The active website linked to the Domain Name about hotel reservations demonstrates that the Respondent is trying to divert Internet users from the Complainant’s official website.
C. The Domain Name was registered and is being used in bad faith. In support of this assertion the Complainant contends that;
1. The Respondent must have known about the Accor hotel chain at the time he registered the Domain Name. Accordingly, the Domain Name must have been registered to prevent the Complainant from reflecting the mark in a corresponding domain name and diverting business from the Complainant’s official websites. For this reason, the Domain Name was registered primarily in order to disrupt the business of the Complainant.
2. The active website linked to the Domain Name shows that the Domain Name was used in bad faith as this is precisely the same activity as that of the Complainant.
3. Accor is a very famous hotel chain. The Respondent’s registration of the Domain Name followed by its use in the same field of business tends to create a confusion in the public’s mind and divert internet users from the official website of the Complainant. The Complainant contends that the registration by the Respondent was intended to tarnish the reputation of the mark and therefore of the Complainant.
4. The fact that the Domain Name leads to a website about hotel reservations constitutes an act of unfair competition because, on accessing the site, the public will in fact reach offers made by competitors of Complainant.
The Respondent has not replied either to the Complaint nor, evidently, to the letters sent by or on behalf of the Complainant prior to the institution of these proceedings.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is accepted that the Domain Name is confusingly similar to trademarks
or servicemarks in which the Complainant has rights as required by paragraph 4(a)(i)
of the Policy. First, it is well established that, for the purpose of comparing
names, the suffix comprising the top level domain (.com in this instance) is disregarded.
Second, the Complainant has established that it has extensive trade mark rights
in the name ACCOR. Third, the omission of a single "c" to change to
mark "ACCOR" to ACOR does not render ACOR dissimilar to ACCOR. The Complainant
sought support from the case involving <hotelsofitel.net> (ACCOR, Société
Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,
WIPO Case No. D2002-0625
). In that case
the word "hotel" had been added to a word which was identical to the
Complaint’s trademark, rather than similar to the trademark, as is the position
here. Nonetheless, given the very limited nature of the difference the change
is not such as to make ACOR dissimilar to ACCOR. The allegation of typosquatting
does not require any specific finding. Fourth, so far as the added word is concerned,
there are circumstances where the addition of a descriptive word which is not
associated with a Complainant’s activities to a word in which the Complainant
has rights may render the collocation dissimilar to the unadorned word. That is
not the position here; "hotel" is a noun which is descriptive of the
business most closely associated with the Complainant, namely hotels. For this
reason, the combined word, "Acorhotels" is found to be confusingly similar
to the Complainant’s trademark "ACCOR".
B. Rights or Legitimate Interests
The assertion that the Respondent has no rights or legitimate interests in respect of the Domain Name requires consideration of its website which is appended to the bailiff’s affidavit referred to at section 4 above. This site contains on the home page a copyright notice asserting that copyright in the site belongs to Hotel Acor, which is stated to be situated at an address in Ibiza.
On a subsequent page appear details of 4 different types of available holiday accomodation, the "Acor Playa", the "Acor Parque", the "Acor Jardin" and the "Acor Club". The site would appear to offer the user information in a choice of four languages. All these locations seem to be in Ibiza. On-line booking forms are provided on the site.
There is nothing in the material provided by the Complainant to suggest that the four venues are fictitious. Nor is there anything to inform the panelist about the date on which the sites were first named Acor.
If the Respondent is promoting the availability of 4 sites, each using the word ACOR in its name, does this mean that the Respondent has rights or legitimate interests in respect of the Domain Name under the Policy? The material parts of paragraph 4(c) of the Policy provide as follows;
"c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. ………Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) [inapplicable on these facts]".
Does the evidence suggest that the Respondent’s use of the Domain Name is in
connection with a bona fide offering of goods or services 4 (c) (i))? In the
view of the Panel, an offering of goods and services by the Respondent which
comprises: (1) the use by it of a name similar to that of the Complainant’s
trademarks and (2) which is in relation to identical services and (3) is in
a country where the Complainant has an established and extensive business conducted
under the trademarks does not constitute a bona fide offering. This is particularly
the case in view of the evidence the Complainant has adduced as to the prominence
of its mark worldwide. As was said in the case of <madonna.com> (Madonna
Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO
Case No. D2000-0847) "use which intentionally trades on the fame of
another cannot constitute a "bona fide" offering of goods and services…to
conclude otherwise would mean that a Respondent could rely on intentional infringement
to demonstrate a legitimate interest…".
Is there evidence to suggest that the Respondent has been commonly known by the Domain Name even if it has acquired no trademark or service rights 4(c) (i))? In this respect, it is of note that the name of the Respondent, being the Registrant of the Domain Name, is Acortel.s.l.. The party claiming copyright in the content of the website at the Domain Name is stated to be Hotel Acor. There is no evidence to suggest that the Respondent, Acortel s.l. has been commonly known by the name "acorhotel" nor that the Respondent may legitimately be known by the "acorhotel" in hotel business.
The circumstances set out at paragraph 4(c) of the Policy outlining the manner in which a Respondent can establish that it has rights to and legitimate interests in the Domain Name are expressly stated to be non-exhaustive. However, there is no evidence before the Panel to suggest that it would be appropriate to make a finding that the Respondent has such rights or interest. This is unsurprising when the Respondent has chosen not to respond to the Complaint and has not taken the opportunity to seek to supply information which might have led the Panel to take a contrary view. Indeed, Paragraph 14 of the Rules expressly provides that a Panel "may draw such inferences from your default as it considers appropriate"; the inference drawn by the Panel is that the Respondent has no relevant information with which to rebut the Complainant’s assertions.
C. Registered and Used in Bad Faith
A. Paragraph 4 (a) (iii) of the Policy provides that the Complainant must establish that the Domain Name has been registered and is being used in bad faith.
So far as registration is concerned, the date of registration of the Complainant’s marks in Spain is between 1983 and 2001, albeit not all the goods and services for which the trademarks are registered are relevant to hotels and associated hotel services. Registration of the marks precedes the Respondent’s registration of the Domain Name in April 2002. Accordingly, whilst there is no direct evidence on the point, logic suggests that, at the time of registration, the Complainant had a substantial and mature business in Spain under the name ACCOR, it being likely that the date of registration of the Complainant’s trademarks correspond, at least approximately, to the development of its business in Spain.
In the absence of any evidence at all from the Respondent, the Panel concludes that, at the time of registration of the Domain Name, the existence of the Complainant and the nature of its business is likely to have been known to the Respondent. Further the Adminstrative Panel finds that the Respondent is likely to have been aware of the potential for confusion between any website established at the Domain Name site and the Complainant’s websites. This conclusion is reached irrespective of whether, at the time of registration of the Domain Name, the Respondent had already established 4 sites offering accommodation each bearing the prefix ACOR.
Paragraph 4(b) of the Policy provides non-exhaustive instances of what would constitute bad faith registration and use. Of the examples provided, the Respondent’s conduct comes close to, or falls directly within, the relevant working of 4(b) (iv) namely that, by using the domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of services on the website. In these circumstances, the Panel concludes that the Domain Name was registered in bad faith.
The Complainant’s assertion that the Domain Name was registered in order to prevent the Complainant from reflecting its mark in the corresponding domain name seems unlikely in view of the fact that the Domain Name is only similar to, not identical to, the Complainant’s marks. However, neither this assertion nor the allegations of unfair competition require specific findings and none are made.
The Respondent’s use of the site is such that it is highly improbable, for all the reasons outline above, that the Respondent is unaware of the potential for confusion between its site and that of the Complainant. It is also inconceivable, considering the distinctiveness of the Complainant’s mark and its notoriety to the relevant public, that the Respondent’s use of the Domain Name would not be illegitimate or an infringement of Complainant’s trademarks. Accordingly, the Panel also concludes that the Respondent’s use of the Domain Name is also in bad faith.
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 <acorhotel.com> be transferred to the Complainant.
Dated: October 27, 2003