ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. CALBIS

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, Société Anonyme à Directoire v. Calbis

Case No. D2002-0259

1. The Parties

The Complainant in this administrative proceeding is Accor, Société

Anonyme à Directoire et Conseil de surveillance, 2 rue de la Mare Neuve,

F-91000 Evry, France.

The Respondent is Calbis, Gulpinar, Dalyan, Mugla 48840, Turkey.

2. The Domain Name and Registrar

The domain name in dispute is <clubcoralia.com>.

The Registrar with which the domain name is registered is eNom, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint

on March 19, 2002, by e-mail and on March 27, 2002,

in hardcopy. The Center had acknowledged receipt thereof on March 19, 2002.

On March 21, 2002, the Center sent the corresponding Request

for Registrar Verification in connection with this case to eNom, Inc. On

March 22, 2002, the Registrar's verification response confirmed

that the Registrant was Calbis, that the domain name <clubcoralia.com>

was in "lock" status, but also advised that the Registrar had not yet received

a copy of the Complaint. The Center requested therefore the Complainant

on that same date to forward a copy thereof. The Complainant proceeded accordingly

on March 25, 2002.

On March 26, 2002, after having verified whether the Complaint was

satisfying the formal requirements, the Center sent to the Complainant a

Complaint Deficiency Notification as the Complaint had not

been submitted in four copies pursuant to Paragraph 3 (b) of the

Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and

Paragraph 3 (c) of the Supplemental Rules, did not identify the registrar

with which the domain name was allegedly registered at the time the Complaint

was filed according to Paragraph 3 (b) (vii) of the Rules, did not include

a submission by the Complainant to the jurisdiction of the courts in at

least one specified Mutual Jurisdiction (as the Registrar is incorrectly

identified) as required by Paragraph 3 (b) (xiii) of said Rules and as the

domain name at stake was not registered with eNom according to information

received by the Center from the concerned registrar. The Center also sought

clarification from the Complainant in respect of the domain name wording.

On March 28, 002,the Complainant filed by e-mail with the Center the

Amended Complaint that incorporated the changes and clarifications requested.

On April 4, 2002,the Center notified by e-mail, facsimile and courier the

Commencement of Administrative Proceeding to the Parties, in accordance

with Paragraph 4 of the Rules.

On April 25, 2002,the Center issued by e-mail the Notification of Default

to the Respondent for having failed to submit a response to the Complaint

within the deadline granted.

On May 28, 2002,the Center proceeded with the appointment of the Administrative

Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the

appointment of the undersigned as sole panelist in accordance with Paragraph

6(f) of said Rules, after the latter had signed and forwarded to the Center

on May 6, 002, statement of acceptance and declared his impartiality

and independence in this matter.

Transmission of the file to the Sole Panelist was made on May 8, 2002,by

e-mail and registered post, hard copy of which was received by the undersigned

a few days later.

4. Factual Background

The Complainant is the owner of over 80 registered trademarks throughout

the world (Complainant's Annex 3), or figurative trademarks used in connection

with the verbal trademarks "CORALIA".

In particular, the Complainant is the owner of the following trademarks :

- "CORALIA", French trademark, registration number 92437932 (Complainant's

Annex 4), October 16, 1992, this mark designates several goods

such as soaps, perfumes, essential oils, cosmetics (class 3), jewels (class

14), printed matter (class 16), clothing, footwear, headgear (class 25)

and several services such as advertising, distribution of samples (class

35), communications by computer terminals (class 38), education, providing

of training, entertainment, sporting and cultural activities (class 41),

hotels, hotel reservations, restaurants, beauty and hairdressing salons,

or sanatoriums (class 42);

- "CORALIA", French trademark number 93497546 (Complainant's Annex

5), registered on December 21, 1993, this mark designates soaps,

perfumes, essential oils, cosmetics (class 3), jewels (class 14), printed

matter (class 16), clothing, footwear, headgear (class 25) and services

of the classes 35 (advertising, distribution of samples), 38 (communications

by computer terminals), 39 (travel and tourist offices, sightseeing tourism,

arranging of tours, of cruises, booking of seats for travel), 41 (education,

providing of training, entertainment, sporting and cultural activities),

42 (hotels, hotel reservations, restaurants, beauty and hairdressing salons,

or sanatoriums);

- "CORALIA", international trademark, registration number 622008 (Complainant's

Annex 6), dated August 3, 1994, this mark indicates the same

goods and services than the French mark number 93497546 and is available

in several countries, including Benelux, Cuba, Egypt, Italy, Morocco,

Monaco, or Portugal;

- CORALIA, international trademark, number 610695 (Complainant's Annex

7), registered on December 8, 1993, this mark is available in

Austria, Benelux, Switzerland, China, Cuba, Germany, Egypt, Spain, Italy,

Morocco, Monaco, Mozambique, Portugal and Vietnam; the services designated

are the services of travel and tourist offices, sightseeing tourism, arranging

of tours, of cruises, booking of seats for travel (class 39), education,

providing of training, entertainment, sporting and cultural activities

(class 41), hotels, hotel reservations, restaurants, beauty and hairdressing

salons, or sanatoriums (class 42).

5. Parties’ Contentions

A. Complainant

The Complainant submits the following :

(i) the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights, because :

- the domain name in issue includes the Complainant’s "CORALIA"

trademarks;

- the domain name is identical to the Complainant’s "CORALIA"

trade mark but for the additional word : "club"; the word

"club" means "association" or "group of persons",

so this term is generic; that’s why the use of this additional word

does not exclude the likelihood of confusion with the "CORALIA"

trademarks;

- with regard to the extensive reputation throughout the world

of the mark "CORALIA", consumers will obviously be led to

think that the titular of the domain names forms a partnership with

the Complainant, although they could be competitors as the trademark

CORALIA is used in Turkey;

(ii) the Respondent has no legitimate interest or rights in the domain

name, because :

- the Complainant has some rights on the term "CORALIA"

as a trademark since 1992 and has not licensed or otherwise permitted

the Respondent to use any of its trade marks, nor has it licensed

or otherwise permitted the Respondent to apply for or use any domain

name incorporating any of those marks; no agreement, whether written

or oral, has been made between the Complainant and the Respondent;

- the Complainant acquired rights in its mark before the domain

name registration by the Respondent; indeed, the domain name in issue

has been registered on April 11, 2001, whereas the Complainant

has rights in the French trademark CORALIA since October 16, 1992,

- the Respondent is the owner and the manager of an hotel; therefore,

the Complainant has ordered a worldwide search to check his rights

on the mark CORALIA for the services of hotels and restaurants, and

more generally the services of the classes 42 and 43 which has not

revealed any mark "CORALIA" registered by the Respondent

in any country and especially in Turkey; consequently, before the

domain name was registered, the Respondent did not carry on any business

and was not commonly known by any of the domain name or any other

name consisting of "CORALIA";

- the Complainant makes a commercial use of its trademarks in

Turkey, where the Respondent is located since it is the owner of two

clubs Coralia in Turkey, one in Bodrum, the other in Tekirova;

- the Respondent is not making a legitimate non-commercial or

fair use of the domain name, since no web site is attached; in fact,

the domain name is not being used at all.

(iii) the Respondent registered the domain name and is using it in

bad faith, because :

- the Respondent has not been known by the domain name at any

point prior to its registration of the domain names; on the other

hand, the Complainant has an international presence through its Internet

web sites : <coralia.com>, <coralia.fr>, >accortravel.com>,

or <accor.com> which offers many information about the hotels,

restaurants, residences through the world, and allows to consumers

to choose their destinations, rent a residence, or register their

reservations;

- the association of the term "CORALIA" and a word describing

the Complainant’s business activities is likely to be chosen only

by legitimate traders, in agreement with the Complainant;

- the domain name is not active; indeed, there is no web site

attached to said domain name, it lead to a shift of message error,

as set forth in the affidavit drawn by a bailiff;

- given the distinctive nature of "CORALIA", the reputation

of the Complainant, third international leader in the economic sector

of hotels and restaurants, the number of hotels and clubs around the

world (about 200 hotels and clubs in 35 destinations), the Respondent

couldn’t ignore that the Complainant had rights on the term "CORALIA";

the Respondent has therefore registered the domain name in issue in

bad faith; the use or even existence of the domain name is likely

to create a confusion; searches in the Whois databases by consumers

would make them believe that the Respondent is the Complainant or

that they have formed a partnership, whereas they could be competitors;

- Consumers can not obtain some information since the web site

is not active; besides, this domain name has been registered by a

competitor; as a result, the business of the Complainant can be disrupted

by the existence of the domain name in issue.

B. Respondent

The Respondent has not submitted any response to the Complaint.

6. Discussion and Findings

Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the

Policy") sets forth three requirements, which have to be met for the Administrative

Panel to order the transfer of the disputed domain name to the Complainant.

Those requirements are that:

(i) Respondent's domain name is identical or confusingly similar to

a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) Respondent's domain name has been registered and is being used

in bad faith.

The Complainant must prove in the administrative proceeding that each of

the aforesaid three elements is present so as to warrant relief, according

to Paragraph 4(a) of the Policy.

The Administrative Panel has to 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, pursuant

to Paragraph 15 (a) of said Rules.

A. Identical or Confusingly Similar to the Mark

As such, there is no strict identity between the Complainant' trade and

service marks "CORALIA" and the domain name <clubcoralia.com>.

Relying on Viacom International Inc. v. Elephantronics, WIPO

Case No. D2001-0921 (September 18, 2001) and Arthur Guinness

Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO

Case No. D2001-0026 (March 23, 2001), the Complainant submits

that likelihood of confusion has been admitted in such instances and that, in

presence of a trademark combined with generic terms referring to or calling

to mind the goods or services offered by the Complainant, the disputed domain

names were found confusingly similar to the opposed trademarks.

The Sole Panelist is of the view that there is no reason to depart from

such an approach in the present case. In effect, the Complainant's mark

"CORALIA", preceded by the generic term "club" is such as to entertain confusion

among consumers. <clubecoralia.com> is therefore considered as confusingly

similar to the trademark "CORALIA".

Furthermore, the Complainant has established its rights in trade and service

marks "CORALIA" with various registrations for such a name worldwide (see

Complainant's Annexes 3 to 7).

B. Rights or Legitimate Interests of the Respondent

The Respondent, in not responding to the Complaint, has failed to invoke any

of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of

the Policy, any rights to and/or legitimate interests in the domain name in

dispute. This entitles the Administrative Panel to draw any such inferences

from such default as it considers appropriate pursuant to Paragraph 14 (b) of

the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO

Case No. D2000-0009 (February 29, 2000) p. 6 or Isabelle Adjani

.v. Second Orbit Communications, Inc., WIPO

Case No. D2000-0867, (October 4, 2000) p. 6.

It is the Sole Panelist’s finding that the Complainant has established

that the trade and service mark "CORALIA" has been known worldwide for a

significant period of time. Furthermore, absent evidence to the contrary,

the Complainant has not granted any license or otherwise permitted the Respondent

to use such trade and service marks or to apply for any domain name incorporating

the said trade and service marks.

Under those particular circumstances, the Sole Panelist is unable to find

any evidence that would tend to establish that the Respondent has rights

or legitimate interests in respect of the domain name at stake.

C. Registration and Use in Bad Faith

Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances

that evidence registration and use of a domain name in bad faith. Any one

of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have

acquired the domain name primarily for the purpose of selling, renting,

or otherwise transferring the domain name registration to the complainant

who is the owner of the trademark or service mark or to a competitor of

that complainant, for valuable consideration in excess of your documented

out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of

the trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to

attract, for commercial gain, Internet users to your web site 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 your

web site or location or of a product or service on your web site or location.

As already pointed out, the Respondent did not file any response to the

Complaint, failing thereby to invoke any circumstance, which could demonstrate

his good faith in the registration or use of the domain name in issue.

In addition, the Respondent has not disputed any of the Complainant's contentions

mentioned above.

Considering the circumstances of the case, the Sole Panelist finds that

the Respondent, by registering the disputed domain name, keeping it inactive

(see Complainant's Annex 19) and not responding to the Complainant's letters

in any manner whatsoever (see Complainant's Annexes 13, 14 and 18) has adopted

a behavior which amounts to bad faith within the meaning of Paragraph 4

(b) of the Policy and, especially, to subparagraph (ii).

Transfer of the domain name <clubcoralia.com> to the Complainant

shall therefore be ordered.

7. Decision

In light of the foregoing, the Sole Panelist decides that the domain name

registered by the Respondent is confusingly similar to the corresponding

trademarks of the Complainant, that the Respondent has no rights or legitimate

interests in respect of the domain name and that the domain name in issue

has been registered and is being used in bad faith by the Respondent.

Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist

requires that the registration of the domain name <clubcoralia.com>

shall be transferred to the Complainant.

Christophe Imhoos

Sole Panelist

Dated: June 11, 2002

More cases by this complainant

• ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners — D2002-0625 · hotelsofitel.net · Transfer · 29 Aug 2002