WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Hua Thanh Nam
Case No. D2006-1650
1. The Parties
The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, Paris, France.
The Respondent is Hua Thanh Nam, Ha Long City, Quang Ninh, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <novotelhalong.com> and <novotelhalonghotel.com> are 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 December 28, 2006. On December 29, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On January 2, 2007, 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 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 January 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Kevin C. Trock as the sole panelist in this matter on February 20, 2007. 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 Accor 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 140 countries worldwide and it is a widely known group of hotels.
The Complainant is the owner of numerous trademark registrations throughout the world incorporating the mark, NOVOTEL. The NOVOTEL mark is used in 61 countries around the world in connection with 400 hotels.
- 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;
- DOLFI NOVOTEL Trademark n° 703528, protected in particular in Viet Nam, filed on December 1, 1998, and covering products and services in class 16, 25, 28, 41 and 42.
The Complainant also owns 15 domain name registrations incorporating the name ‘novotel,’ e.g. <novotel .com>.
The Complainant sent a warning letter, dated September 5, 2006, by e-mail and registered letter, to the Respondent, asking him to transfer amicably the domain names (Annex 5). The Respondent replied to the e-mail on September 7, 2006, but apparently never received the registered letter. In the response e-mail, the Respondent apparently offered to sell the domain names to the Complainant for US$2,500.00. (Annex 8)
The Complainant offered to the Respondent an amount of 100 Euros to cover expenses related to the registration of the disputed domain names (Annex 9). The Respondent never replied.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names use the trademark and trade name NOVOTEL. Complainant also alleges that the mere addition of the terms “halong” and “hotel” would lead people to think that these domain names are specific to a Novotel hotel located in Halong, and is insufficient to avoid any confusion. The Complainant alleges that the purpose of these registrations is to attract Internet users to the Respondent’s web site located at “www.halongplazahotel.com” and to confuse the public into believing there is some relationship with the Complainant’s NOVOTEL hotel chain.
As a result, the Complainant alleges that the domain names <novotelhalonghotel.com>, and <novotelhalong.com> are confusingly similar to the trademarks owned by the Complainant.
The Complainant also alleges that the Respondent is not affiliated with the Complainant in any way, and the Complainant has not authorized the Respondent to use or register its trademarks, nor to seek the registration of any domain name incorporating the marks.
The Complainant further alleges that the Respondent has no prior rights or legitimate interests in the domain names and that the Respondent is not making any legitimate non-commercial or fair use of the domain names. The Complainant alleges that the Respondent knew or must have known of the Novotel hotel chains at the time the disputed domain names were registered and that the Respondent registered the disputed domain names in order to make a profit.
Finally, the Complainant alleges that the Respondent intentionally attempted to divert Internet user’s from the Complainant’s business by creating a likelihood of confusion with the Complainants’ trademarks.
The Respondent did not file any response to the Complainant’s contentions and is therefore in default.
In accordance with paragraphs 14(a) and (b) of the Rules, the Panel may decide the matter based on the Complaint and may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant is the owner of numerous trademark registrations throughout the world for the mark NOVOTEL, including in Viet Nam. The domain names in dispute use these trademarks along with other terms. The term “halong” is the name of a city in Viet Nam. The addition of the term “halong” would likely lead people to think that this domain name is related to a Novotel hotel located in Halong. The term “hotel” is a generic word describing the Complainant’s services related to its trademarks.
Numerous UDRP decisions recognize that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute (see Sanofi-Aventis v. Carmen Capone, WIPO Case No. D2006-0112). Geographic terms are generally considered generic terms.
In PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629, the domain name included the complainant’s mark, PEPSI, plus the geographically descriptive term “USA”. The Panel found that the domain name was confusingly similar to the complainant’s mark. Other decisions under the Policy have held that the addition of a descriptive term to a mark does not negate the confusing similarity between the mark and the domain name. See, e.g., C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466 (domain name including the complainant’s mark and the geographical suffix “usa” was confusingly similar to the mark).
It is well-established that the generic top level domain of a domain name such as “.com” or “.net” does not affect the domain name for the purpose of determining confusingly similarity. See DZ Bank AG v. Bentz, WIPO Case No. D2006-0414; Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223. Accordingly, the extension “.com” is not given any consideration when examining the identity or similarity between the Complainant’s mark and the disputed domain names.
For these reasons, the Panel has determined that the disputed domain names are confusingly similar to the registered trademarks owned by the Complainant.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent is not affiliated with the Complainant in any way, and that the Complainant has not authorized the Respondent to use its trademarks, or to seek the registration of any domain name incorporating the Complainant’s marks.
The registration of the Complainant’s NOVOTEL trademark and of the various domain names owned by the Complainant preceded the registration of the disputed domain names <novotelhalonghotel.com> and <novotelhalong.com> by the Respondent.
There is no indication that the Respondent is known by the name “novotel” or any similar term. Based on the record, the Respondent is not making any legitimate non-commercial or fair use of the disputed domain names.
The Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and there is no evidence to the contrary.
For these reasons, the Panel has determined that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation may demonstrate the Respondent’s registration and use in bad faith. These include paragraphs 4(b)(i) - (iv):
(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.
In all likelihood, the Respondent knew of the Novotel hotel chain at the time he registered the disputed domain names.
It has been established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. See Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
The available evidence suggests that the Respondent registered the disputed domain names in order to make a profit from his registrations. He offered to sell the disputed domain names for US$2,500.00. This amount is significantly higher than the out-of pocket costs of registering the domain names. Previous decisions have found that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is evidence of bad faith. See DZ Bank AG v. Bentz, WIPO Case No. D2006-0414, and Adidas-Saloman AG v .Vincent Stipo, WIPO Case No. D2001-0372.
In addition, it appears that the Respondent, by registering domain names corresponding to well-known trademarks may have diverted Internet users from the Complainant’s business by creating a likelihood of confusion with the Complainants’ trademarks. This conduct constitutes evidence of bad faith use and may harm the Complainant’s reputation, by attracting Internet users to a web site that is not sponsored by the Complainant trademark owner. See Nominet Decision No. 01831, SFR v. Redpoint Consulting Ltd.
Accordingly, for the reasons stated above, the Panel finds that the Respondent registered and uses the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 names be transferred to the Complainant .
Kevin C. Trock
Dated: March 8, 2007