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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR v. Steve Kerry / North West Enterprise, Inc.

Case No. D2006-0649

 

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Steve Kerry / North West Enterprise, Inc., Santa Fe Springs, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <coraliahotel.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On June 14, 2006, following preliminary email correspondence, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On June 15, 2006, OnlineNic, Inc. d/b/a China-Channel.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2006. The Center verified that the Complaint together with the amendment to 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 June 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on July 28, 2006. 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 is the European leader and one of the world’s largest groups in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90 countries worldwide. More particularly, the Complainant operates several hotels especially in the United States and precisely in California.

The Complainant group holds amongst other trademarks SOFITEL, IBIS, MERCURE, NOVOTEL and CORALIA. Coralia hotels have existed since 1993. They are holiday villages essentially around the Mediterranean Sea. Coralia hotels are present in 7 countries around the world, with 11 upper-range hotels. The Complainant owns and mainly communicates on the Internet via the websites “www.accorhotels.com” and “www.coralia.com” in order to allow the Internet users a quick and easy way of finding and booking its hotels. Copies of print outs of the ‘home pages’ of these websites have been provided to the Panel.

The Complainant is the owner of numerous trademark rights throughout the world related to hotels in the Complainant’s group, especially in the field of hotels and restaurants and of Internet’s services, among which are the following:

- CORALIA, French Trademark n° 93 497 546, filed on December 21, 1993, and covering goods and services in classes 3, 14, 16, 25, 35, 38, 39, 41 and 42;

- CORALIA, French Trademark n°92 437 932 filed on October 16, 1992, and covering goods and services in classes 3, 14, 16, 25, 28, 35, 38, 39, 41, 43 and 44;

- CORALIA, CORALIA ACCOR HOTEL, French Trademark n°3 178 003, filed on August 2, 2002 and covering services in classes 39, 41 and 43;

- CORALIA, International Trademark n° 610 695, filed on December 8, 1993 and covering services in classes 39, 41 and 42;

- CORALIA International Trademark n° 622 008, filed on August 3, 1994, and covering goods and services in classes 3, 14, 16, 25, 35, 38, 39, 41 and 42.

- CORALIA US Trademark n°78050801 filed on March 1, 2001, and covering goods and services in class 42.

Copies of the corresponding registrations have been provided to the Panel.

The Complainant is also the registrant of numerous Coralia domain names, among which are the following:

- <coralia.com> registered on April 16, 1996;

- <coralia.biz> registered on November 19, 2001;

- <coralia.us> registered on April 19, 2002;

- <coralia.es> registered on September 29, 2005;

- <coralia.at> registered on February 2, 2006.

Details of the registrations of these domain names have been provided to the Panel.

The Complainant noticed that the disputed domain name <accorhoteles.com> had been registered. A Whois Database search revealed that this domain name was registered by the Respondent. A copy of the search result has been provided to the Panel. The domain name was and still is linked to a search engine proposing links to travel, hotels and vacations websites, of which the Panel has been provided with a copy.

The Complainant sent a warning letter, dated June 14, 2005, by registered letter and by e-mail, to WWW Enterprise Inc. (according to the information available on the Whois search at that time), asking them to transfer amicably the domain name. The Panel has been provided with a copy of this letter. The Complainant never received any answer.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name reproduces entirely the mark CORALIA with the mere addition of the word “hotel” which moreover makes no difference with the Complainant’s trademarks, as the added word is specific to the activity of the Complainant.

Indeed “Hotel” is a generic word that describes the main business of the Complainant. Numerous UDRP decisions recognize that adding a generic word is insufficient to give any distinctiveness to the disputed domain name. Furthermore, confusion is heightened when the generic word added by the Respondent is descriptive of the Complainant’s goods and services marketed in relation to its trademark (ACCOR v. VVNW Inc., WIPO Case No. D2005-0026 and Sociйtй Des Hфtels Mйridien v. wwwenterprise, Inc., WIPO Case No. D2005-0546), which is precisely the case here.

As a result, it clearly appears that the disputed domain name is strictly identical or at least similar to the numerous trademarks registered by the Complainant.

Therefore, it is established that the Complainant has trademark rights in the name that is reproduced in its entirety in the disputed domain name, and, therefore, the condition of paragraph 4(a)(i) is fulfilled.

The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent is not affiliated with the Complainant in any way, which has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating such marks.

Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of several CORALIA trademarks and of the various domain names owned by the Complainant preceded the registration of the disputed domain name for several years. More particularly, the domain name <coralia.com>, owned by the Complainant, was registered in 1996.

Similarly, the Respondent is not known under the name CORALIA, or CORALIA HOTEL or any similar name. Furthermore, it is unlikely that the name CORALIAHOTEL, composed of a renowned trademark plus a word referring to its business, may have a special meaning in English.

And finally, the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, as the domain name directs Internet users to a search engine proposing sponsored links to travel, hotels and vacations websites.

In fact, since the disputed domain name is so identical to the famous trademark of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.

For all the above-cited reasons, it is undoubtedly established the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

The domain name was registered and is being used in bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved.

With regard to the registration in bad faith, it seems obvious that the Respondent knew or must have known of the Complainant’s hotel chain at the time he registered the domain name. It seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name as the very precise combination of the words Coralia and hotel clearly indicates that the Respondent had the Complainant in mind while registering the disputed domain name.

Moreover, the Respondent apparently did register the disputed domain name on purpose, to disrupt the Complainant’s business, as it used the domain name with sponsored links to vacations and hotels websites.

Thus, the Respondent registered the disputed domain name while being perfectly aware that it was infringing the Complainant’s rights.

Further, some elements may be put forward to support the finding that the Respondent also used the domain name in bad faith.

The Respondent, by registering a domain corresponding to a famous name he could not ignore, intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. This conduct constitutes evidence of bad faith use, since the Respondent is trying to take profit from the reputation of the Complainant’s trademarks, by increasing the traffic on its website thanks to the mere reproduction of somebody else’s trademark; this constitutes obviously a bad faith use of the disputed domain name (Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636).

Furthermore, it is not the first time that the Respondent tries to use the Complainant’s trademarks for commercial gain. A previous case involving the Respondent and the Complainant ordered that the domain names, <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> be transferred to the Complainant (ACCOR v. WWWEnterprise Inc., WIPO Case No. D2005-0025). This previous decision shows the bad faith of the Respondent as far as he does not stop registering domain names which are related to the Complainant’s hotel chains.

Consequently, in view of the above it is established the Respondent did both register and use the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior WIPO UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark CORALIA, which is owned and has been commercially used and promoted by the Complainant exclusively in and for the purposes of its hotels business for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark CORALIA is well-established and well-known and has a good reputation.

And the addition of the word ‘hotel’ is purely descriptive and does not serve to distinguish the Respondent’s use of the Complainant’s mark CORALIA. See F. Hoffman-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-Rd, WIPO Case No. D2006-0047, in which the panel found that “….the addition of the suffixes “information”, “purchase” and “dosage” are descriptive and add no distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant’s well-known trademark.”

In any case, the use of the descriptor ‘hotel’, describes the Complainant’s business and the services the Complainant provides, with which the Respondent has no connection whatever, is misleading and causes confusion in the market place. Indeed, as was pointed out by the panel in ACCOR v. VVNW Inc., WIPO Case No. D2005-0026: “… the addition of the term “hotel” tends to compound the confusion.”

Likewise, the addition of the suffix ‘.org’, which is required for registration purposes only, is also irrelevant, for trademark purposes, and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name Pomellato, is not relevant. And Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”. The same principle and rationale also apply to the addition of the suffix ‘.org’.

The Respondent’s disputed domain name, which essentially incorporates the Complainant’s well-known trademark CORALIA, is not only an infringement of that trademark, but is also in breach of the Policy.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark CORALIA, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established, well-known and commercially valuable rights through registration and also commercial use and promotion around the world, including the United States, for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the notoriety of the Complainant’s trademark CORALIA, as well as its pre-existing domain names containing the trademark CORALIA (cited above), which have been registered and used worldwide by the Complainant, the Respondent in all likelihood must have known that, when registering the disputed domain name, the Respondent could not have claimed any such rights or interests. Also, the Respondent has not been authorized or licensed by the Complainant to use the disputed domain name.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name for a website that directs Internet users not to the Complainant but to the Respondent and the links there to hotels other than those of the Complainant.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark CORALIA inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website to the Respondent’s website (see further on this point below) and the links there to hotels which are competitors of the Complainant, with the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading, for commercial gain, on the good name, notoriety and well-earned reputation of the Complainant’s business and its well-known trademark and thereby unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years in its name and mark around the world, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.”

Based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known trademark CORALIA over many years. Indeed, as previously mentioned, in the absence of any satisfactory explanation to the contrary, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s goodwill and thereby increase traffic to its web site. This conclusion is reinforced by the links on the website of the Respondent to several hotels which are competitors of the Complainant. This conduct constitutes bad faith . See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case D2005-0636, in which the panel held that “…the Respondent’s … opportunistic exploitation of inevitable Internet user confusion…..by way of increased Internet traffic he would not have otherwise attained….…..constitutes… bad faith.”

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, CORALIA, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the Case File is, in fact, the situation. Such misleading conduct, in the view of the Panel, is also evidence of bad faith on the part of the Respondent.

Also, the Panel agrees with the Complainant’s contention that the Respondent would appear to have registered the disputed domain name with the express purpose of disrupting the Complainant’s business, in view of the fact that the disputed domain name contains sponsored links to vacations and hotels websites, which are in competition with the Complainant. Such behavior on the part of the Respondent falls within the terms of paragraph 4(b)(iii) of the Policy and, in absence of any evidence to the contrary, of which none has been forthcoming, is further evidence of bad faith on the part of the Respondent.

Furthermore, the Panel has also taken note that, as mentioned above by the Complainant, the Respondent has previously attempted to use several of the Complainant’s hotel trademarks for its own commercial gain. See ACCOR v. WWWEnterprise Inc., WIPO Case No. D2005-0025, which involved, inter alia, the domain names, <coraliahotel.net> and <coraliahotels.net>. Such previous bad faith on the part of the Respondent in relation to the use of the Complainant’s trademarks in connection with hotels, including the CORALIA one, subject of this Complaint, tends to corroborate the existence of bad faith on the part of the Respondent in the present case.

Finally, the failure of the Respondent to answer the Complainant’s e-mails to settle this matter amicably and also the Complainant’s cease and desist letter, as mentioned above, and also the failure to answer this Complaint or take any part in the present proceedings, also indicate bad faith on the part of the Respondent.

Thus, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

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, <coraliahotel.org>, be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: July 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0649.html

 

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