WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Everlasting Friendship Trust
Case No. D2005-0626
1. The Parties
The Complainant is Accor, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Everlasting Friendship Trust, Jersey United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <novotelkrabi.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005. On June 15, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 16, 2005, Tucows 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 June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.
The Center appointed Mario A. Sol Muntañola as the Sole Panelist in this matter on August 18, 2005. 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 owns, among others, the following trademarks:
- NOVOTEL, International Trademark n° 352918, filed on November 25, 1968, renewed and covering products and services in classes 11, 16, 19, 20, 28, 29, 42.
- NOVOTEL, International Trademark n° 542032, filed on July 26, 1989, renewed and covering services in class 42.
- NOVOTEL, International Trademark n° 564565, filed on November 23, 1990, renewed and covering products and services in classes 16, 20, 21, 25, 35, 38, 39, 41, 42.
- NOVOTEL, International Trademark n° 618550, filed on May 31, 1994, renewed, covering products and services in classes 3, 16, 42.
- NOVOTEL, International Trademark n° 767863, filed on August 21, 2001, and covering products and services in class 38.
- NOVOTEL, International Trademark n° 785645, filed on June 25, 2002, and covering products and services in classes 43.
- NOVOTEL, Community Trademark n°003544137, filed on October 30, 2003, and covering products and services in classes 38, 41, 43.
The Panel considers that NOVOTEL is a well-known trademark. Besides, Novotel is protected as a trade name.
The Complainant has also registered the domain name<novotel.com> since April 10, 1997.
In an earlier WIPO Case No.D2005-0288, the Complainant filed a Complaint against the Respondent of the domain name <novotelnewyork.com>. The Panel in that case decided to transfer said domain name to the Complainant.
5. Parties’ Contentions
Accor is one of the world’s largest groups in the travel, tourism and corporate services market sector. The group holds, among others, the following trademarks: Sofitel, Ibis, Motel 6 and Novotel. This latter trademark is present in 61 countries comprising 401 hotels worldwide. The Complainant owns the domain name <novotel.com> in order to allow the Internet users a quick and easy way of finding and booking hotels. Accor operates several hotels in the South East of Asia, and, in particular, it has 21 hotels in Thailand, where the city of Krabi is located. Krabi is one of the most touristic places in the country and there are a lot of those hotels located.
The Complainant tried to settle the conflict at least twice, sending certified letters both on March 29, 2004 and on July 28, 2004, neither one of which obtained a reply.
Complainant contends that the domain name is identical or at least confusingly similar to the Novotel trademark pursuant to the Policy paragraph 4(a)(i).
Complainant considers that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy paragraph 4(a)(ii).
Complainant deems that Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15 a) of the Rules, the Panel shall decide a 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.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt as to the trademark rights the Complainant has in the name Novotel worldwide.
The domain name registered by the Respondent is formed by the trademark Novotel as prefix, to which a geographical denomination is added, which is the Thai city Krabi. This city only indicates a place that maybe also the destination of the tourist services offered by Complainant.
It has been determined by UDRP panels in numerous precedents similar to the present case, that the mere addition of a geographical name to a trademark does not exclude confusing similarity (see for all the above mentioned WIPO Case No. D2005-0288, which includes a reference to some significant decisions relating to this matter).
Therefore, the Panel is of the opinion that the domain name <novotelkrabi.com> is confusingly similar to the numerous trademarks registered by the Complainant, in conformity with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no evidence of the existence of or legitimate rights or interest of the Respondent in the domain name.
In this sense, the Panel does not appreciate the existence of any circumstance that permit reaching such conclusion. Neither of the examples of rights or legitimate interests have been proven, nor has other evidence to this end brought forward.
In addition, the Respondent does not maintain any type of link or association with the Complainant, nor does it have shared interests with the latter, nor has it received from him any permission or authorisation for the use of the Novotel trademark.
The Respondent has never been known under the denomination Novotel or any similar term.
In relation to the existence on behalf of the Respondent of a loyal and legitimate use of the domain name, or, at least, the existence of serious preparations addressed to that purpose, the fact that the domain name is not operational eliminates such possibility. All the more reason why such lack of use cannot be characterised as a good faith offer of goods or services, in the sense established by Paragraph 4(c) of the UDRP.
It should be emphasized that the fact that there has been no response to the claim. This can only be interpreted as proof of the Respondent’s lack of interest in bringing forth evidence that may allow a different conclusion.
In view of the foregoing, the Panel considers that the Respondent lacks legitimate rights or interests over the domain name in the terms of Paragraph 4(a)(ii) of the UDRP.
C. Registered and Used in Bad Faith
The Panel considers that the use as domain name of the well-known trademark Novotel together with the name of a tourist city in Thailand, where the Complainant has a number of hotels, cannot obey to mere chance and has no justification.
Likewise, the facts contained in the decision of WIPO Case No. D2005-0288, that settles a very similar situation between the same parties, clearly point to that same conclusion, and therefore it must be understood that the Respondent knew about the Novotel trademark, its reputation and the business area in which the Complainant has been developing its services.
Respondent’s awareness implies that when registering the domain name in question, the Respondent was seeking to take advantage of the reputation of the Complainant’s trademark rights, and, consequently, registered the domain name in bad faith.
Likewise, the established lack of use of the domain name may be understood as a use in bad faith, according to the criteria applied by other panelists.
In addition, the Respondent’s complete silence in the face of the Complainant’s request to settle the conflict, including the failure to reply to the present claim, constitute an additional factor to be considered as evidence of the registry and use in bad faith of the domain name.
By way of conclusion, the Panel considers that, in conformity with paragraph 4(a)(iii) of the Policy, the Respondent has registered and used in bad faith the disputed domain name.
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 <novotelkrabi.com> be transferred to the Complainant.
Mario A. Sol Muntañola
Dated: September 1, 2005