WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACCOR v. Domain Explorer
Case No. D2007-0318
1. The Parties
The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Domain Explorer, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <novhotel.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2007. On March 5, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 8, 2007 eNom 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 contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 26, 2007. 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 April 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2007. The Response was filed with the Center by email on April 3, 2007.
On May 2, 2007, the Complainant filed an unsolicited submission.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 15, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant owns 412 hotels under the name Novotel in 56 countries, including 10 Novotel hotels in the United States of America.
The Complainant owns numerous trademarks for NOVOTEL. These include United States registered trademarks No. 105950, (word and design mark) registered on November 9, 1993, covering goods and services in Class 42, including hotel restaurants and motels; and No. 2103007 (word mark) registered on November 5, 1996, covering goods and services in Classes 16 and 42, including hotel services and hotel reservations services.
The Complainant is also the registrant of numerous domain names, of which the most significant is <novotel.com>, by means of which it offers online hotel reservations.
The disputed domain name was registered on August 29, 2002. When accessed on December 11, 2006, from France, it resolved to a French language website at “www.travelnow.com”, offering travel-related services including hotel reservations. The domain name <travelnow.com> is registered in the name Hotels.com, of Dallas, Texas.
In response to two cease and desist letters from the Complainant, the Respondent claimed the word ‘novhotel’ means ‘New Hotel’ in Esperanto and is therefore a generic phrase.
5. Parties’ Contentions
The Complainant says the disputed domain name should be transferred to the Complainant because:
(a) the domain name is identical or at least confusingly similar to the Complainant’s NOVOTEL trademark, which has been recognized as a well-known trademark throughout the world: Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0626;
(b) the Respondent has no rights or legitimate interests in the disputed domain name in that the Respondent is not affiliated with the Complainant and is not authorized by the Complainant to seek registration of any domain name incorporating the Complainant’s mark; the Respondent is not known by the domain name, which was registered nearly 10 years after the Complainant registered its first United States trademark; the domain name is being used in the very field of activity in which the Complainant has established a worldwide reputation and in competition with the Complainant; the Respondent’s claim that the domain name translates into ‘New Hotel” in Esperanto is incorrect and in any event the website to which the disputed domain name leads is operated in French; and
(c) the disputed domain name was registered and is being used in bad faith because the Respondent clearly knew of the NOVOTEL trademarks and domain names when registering the disputed domain name; the addition of the letter ‘H’ to the Complainant’s mark makes this a case of typosquatting; and the domain name is being used intentionally to divert traffic intended for the Complainant’s own online booking services to a commercial website offering competing services.
The Response repeats the contention made in correspondence with the Complainant’s attorney that the word ‘novhotel’ means ‘New Hotel’ in Esperanto.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As to the Complainant’s unsolicited submission, paragraph 12 of the Rules provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. This is not a case of discovery of evidence not reasonably available to the Complainant at the time of its initial submission, nor of arguments by the Respondent that the Complainant could not reasonably have anticipated: see Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. Indeed, the Complainant merely repeats contentions made in its Complaint. Accordingly the Panel does not admit the unsolicited submission.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The top level of the disputed domain name, “.com”, is not to be taken into account when considering whether the domain name is identical or confusingly similar to the NOVOTEL trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Many cases have established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online, Inc. v. Andy Hind, WIPO Case No. D2001-0642 and The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
The disputed domain name <novhotel.com> is visually virtually identical and, bearing in mind that, in French, the letter ‘H’ in ‘Hotel’ is silent, aurally identical to the Complainant’s famous trademark NOVOTEL.
The Complainant has established this element of its case.
B. Rights or Legitimate Interests
The Respondent does not deny the Complainant’s assertions that the Respondent is not affiliated with the Complainant; is not authorized by the Complainant to seek registration of any domain name incorporating the Complainant’s mark; and is not known by the domain name.
These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Respondent’s sole contention is that the word “novhotel” means “New Hotel” in Esperanto and is therefore a generic phrase. The Complainant has provided dictionary references which appear to contradict this but it is unnecessary for the Panel to determine the Esperanto meaning of the word, since the website to which the disputed domain name resolves (at least from France) is in French. The Respondent gives no credible explanation for the registration and use, in connection with a French language website offering hotel reservations, of a domain name comprising a word which might have a generic meaning in Esperanto but which is virtually identical to the world-famous trademark of a French-owned hotel chain. The Respondent does not claim to speak or use Esperanto nor to engage in any activity addressed to people who wish to communicate in Esperanto.
Significantly, the Respondent does not claim to have been unaware of the Complainant’s NOVOTEL trademark when registering the disputed domain name. Having regard to the use to which the Respondent has put that domain name, it is inconceivable that the Respondent was unaware of that mark and did not intend, by registering the domain name and using it in connection with hotel reservations, to trade off the worldwide reputation of the Complainant in that mark. Such use cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com” WIPO Case No. D2000-0847.
The Panel finds that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name in order to trade off the reputation of the Complainant’s mark and is using the disputed domain name intentionally to attract, for commercial gain, Internet users to the “www.travelnow.com” website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website or of services on that website.
Accordingly the Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established this element of its case.
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, <novhotel.com> be transferred to the Complainant.
Alan L. Limbury
Dated: May 29, 2007