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WIPO Arbitration and Mediation Center

EXPERT DECISION

Accor SA v. Philip Korn

Case No. DCH 2006-0007

1. The Parties

The Claimant is Accor SA, Evry, France.

The Respondent is Philip Korn, Oulens, Switzerland.

2. Domain name

The dispute concerns the following domain name: <mercure.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On April 3, 2006, the Center acknowledged the receipt of the request. On April 5, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On the same day, SWITCH confirmed that the Respondent is listed as the holder of the domain name and provided the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the “Rules of Procedure”), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on April 6, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was April 26, 2006.

The Respondent filed a Response on April 24, 2006. On April 26, 2006, the Center acknowledged the receipt of the response and confirmed that it would proceed to appoint a conciliator.

On May 8, 2006, Claimant filed an additional statement to the Response. In accordance with the Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on May 24, 2006. The Conciliation conference did not result in a settlement between the parties.

The Claimant made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.

On June 19, 2006, the Center appointed Michael Treis as Expert in this case. The Expert finds that it was properly constituted. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

The Claimant is the owner of the Swiss trademark registration No. 451323 MERCURE registered on May 8, 1998, in the International Class 42 covering hotel services. It is also the owner of the Swiss trademark registration No. P521863 MERKUR, which has a filing priority of July 20, 1993, and a priority of use of January 1976. This registration also covers hotel services in Class 42.

The Claimant is one of Europe’s and the world’s largest groups of hotels, which operates 4000 hotels worldwide. Of these hotels, 750 hotels in 49 countries are operated under the trademark MERCURE. Of these hotels, four hotels are operated in Switzerland under the trademark MERCURE. The first Mercure Hotel was opened in Switzerland in July 2003.

The Respondent registered the domain name <mercure.ch> on June 20, 2002. This registration has remained inactive since then.

In 2003, the Claimant’s attorney requested that the Respondent transfers the domain name <mercure.ch> but without success. This request was renewed in January 2006, but the Respondent did not comply with this request either.

MERCURE is not only a trademark of the Claimant, but also it is the name of a Roman god (of eloquence, skill, thieving etc.), of the planet nearest to the sun and of a liquid metal. It is therefore used relatively broadly in various areas such as medicine, astronomy, chemistry, etc. It should also be noted that the German translation of MERCURE, i.e. MERKUR, corresponds to a well-known Swiss chocolate brand.

5. Parties’ Contentions

A. Claimant

Claimant contends that the registration of the domain name infringes his right in a distinctive sign under the law of Switzerland.

The Claimant is the holder of the registered trademark containing the sign MERCURE, to which the domain name is identical. The Claimant claims that it was internationally known before the Respondent’s registration of the domain name.

The disputed domain name was registered June 20, 2002, by the Respondent, thus later than the trademark registration MERCURE.

Claimant furthermore states as follows:

- There are no reasonable grounds why the Respondent registered the disputed domain name. The way the Respondent reacted to the Claimant’s request to transfer the domain name in dispute shows that there is no explanation for this registration.

- The Respondent did not provide any reasonable explanation why he registered the domain name or why he is not willing to transfer it.

- The Respondent has notice of the Claimant’s rights and interests in the trademark MERCURE and MERKUR and its business activities in Switzerland. He knows therefore that the Claimant faces substantial disadvantages if the Claimant cannot use the domain name <mercure.ch> to market its services in Switzerland.

- By registering the domain name <mercure.ch> which is identical to the Claimant’s well-known trademark in Switzerland and confusingly similar to the trademark MERKUR, the Respondent created a likelihood of confusion even if the disputed domain name is presently inactive. An internet user is likely to assume a connection between the Respondent’s website and the Claimant’s trademark protected products and services. The Respondent is thereby trying to take advantage of the Claimant’s brand recognition. The Respondent’s behavior creates a likelihood of confusion and therefore violates the Claimant’s rights. By the mere registration of a domain name, the Respondent prevents the Claimant of registering a domain name reflecting its own trademarks. The passive holding of a domain name results in an intended active disruption of the Complainant’s business interest and activities.

The Claimant therefore concludes that the passive holding of a domain name by the Respondent is equal to an active infringement of the Claimant’s rights in a distinctive sign on the law of Switzerland.

B. Respondent

The Respondent contends that Accor Group owns the registered trademark MERCURE and MERKUR according to hotel business only.

The Respondent believes that past requests from the Claimant’s attorney were aggressive but were not followed up as swiftly or consequently one would have expected, had the domain name been so important for the Claimant.

Several other companies are using the same name in different kind of business, for example “merkur.com”, “mercure.fr” or “merkur.ch”.

Accor was careless not to register its domain name with Switch long ago.

6. Discussion and Findings

A. The Claimant has a right in a distinctive sign.

The Expert finds that by virtue of its Swiss trademark registration No. 451323 MERCURE, Claimant has an exclusive right to this distinctive sign in relation to hotel services and similar goods and services.

B. Whether the registration or use of the domain name at issue constitutes a clear infringement of the Claimant’s right

The Claimant has based its complaint on its Swiss trademark registrations for MERCURE and for MERKUR and on the law against unfair competition. Pursuant to art. 3 in combination with art. 13 of the Swiss Trademark Act, a trademark right gives its owner the exclusive right to use a trademark in relation to the goods and services for which it has been registered. This protection extends to use for similar goods or services in the sense of art. 3 Trademark Act. Art. 3 lit. d Swiss Unfair Competition Act prohibits measures that are likely to cause confusion with products, works, services or the business of others.

With regard to the claim under trademark law, the Expert notes that the Respondent has not used the domain name for hotel services or for similar goods or services. Since the Respondent has only registered the domain name but not used it, the question therefore is, whether mere registration of the domain name may be regarded as an infringement of Claimant’s trademark right in relation to MERCURE.

This might be the case if Claimant’s trademark MERCURE would be famous or at least well known in Switzerland. However, Claimant operates only four hotels in Switzerland, and it is therefore doubtful whether MERCURE can be considered as a well known trademark. The fact that MERCURE also is a name of a Roman god, of a planet and of a liquid metal shows that Claimant’s contention that this name is automatically associated with its hotel business can be contested. It is also quite possible that people who are interested in mythology, astronomy or chemistry would search the domain name <mercure.ch> on the internet looking for other information than the one provided by Claimant concerning its hotels. In this context, it also matters that Claimant’s first hotel in Switzerland was opened before Respondent registered the domain name. In case of the domain name <mercure.ch>, the Expert finds that it is conceivable that the Respondent has a real interest to use the domain name for a website that has nothing to do with the Claimant or hotel services in general. For these reasons, the Expert does not find that the registration of the domain name constitutes a clear infringement of Claimant’s trademark rights.

Nor is there any clear infringement of Claimant’s rights under Swiss law against unfair competition. Nothing in the request shows that the Respondent actually has tried to obstruct Claimant’s business by registering the domain name. The domain name was registered before Claimant opened its first hotel in Switzerland. Claimant has not shown that in 2002 the Respondent had reason to anticipate that Claimant would soon be opening a number of hotels in Switzerland. As Claimant’s website “www.mercure.com” shows, it does have numerous hotels in Europe and it is well represented in most countries, but its expansion to Switzerland is relatively recent. Under these circumstances there is no general presumption that Respondent’s registration of the domain name constitutes unfair competition. The Expert does also not see that the Respondent, in the circumstances of this case, actually owes any reasonable explanation to the Claimant as to why he registered the domain name or as to why he is not willing to transfer it. The registrant of a domain name may owe such a reasonable explanation whenever the circumstances are such that it is difficult to imagine that he has a bona fide interest to register and use the domain name. In the present case, where the distinctive part of the domain name has a number of other meanings in the French language, these circumstances are not at hand.

The Expert cannot rule out the possibility that this assessment might change over time. The Respondent registered the domain name four years ago but has not yet put it in use. While there is no general obligation to commence use of a registered domain name, it is not the purpose of domain name registrations to remain inactive over a long period of time. Rather, domain name registrations have the purpose to be used for websites can be accessed through the internet. Therefore, if Respondent would continue to hold on to his inactive registration of the domain name while the Claimant would continue to build up its chain of hotels in Switzerland, thereby further strengthening the reputation of its trademark MERCURE, one might find, that the Respondent’s credibility as to his motives is decreasing and that the passive holding of the domain name constitutes an active disruption of the Complainant’s business interests and activities, which is regarded as equal to an active infringement of Claimant’s rights in a distinctive sign in Switzerland. However, at this point in time, the Expert does not find that this is the case.

7. Expert Decision

For the above reasons, the Request is denied.

Michael Treis
Expert

Dated: June 27, 2006