WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. S 008-0706
1. The Parties
Complainant is Accor, Evry, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Sergey Fomin, Belorechensk, Krasnodarskiy Kray, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <novoteladelaide.com> (the “Domain Name”) is registered with EstDomains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2008. On May 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 9, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 23, 2008. 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”).
With a message to the Center dated May 26, 2008, Respondent requested that any communication to it be sent in Russian. In response to this request, the Center correctly informed Respondent that pursuant to Rules, paragraph 11, the proper language of the proceeding is English, being the language of the registration agreement for the Domain Name.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2008.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 4, 2008. 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
Complainant is the owner of a number of NOVOTEL trademarks, registered for the territories of various countries throughout the world, especially in relation to hotel and restaurant services. In particular, it owns the following trademarks:
- NOVOTEL, International Trademark No. 352918, filed on November 25, 1968, registered for the territories of 10 countries for goods and services in International classes 11, 16, 19, 20, 28, 29 and 42;
- NOVOTEL, International Trademark No. 542032, filed on July 26, 1989, registered for the territories of 39 countries, including the Russian Federation, for goods and services in International class 42;
- NOVOTEL, International Trademark No. 564565, filed on November 23, 1990, registered for the territories of 20 countries, including the Russian Federation, for goods and services in International classes 16, 20, 21, 25, 35, 38, 39, 41, and 42;
- NOVOTEL, International Trademark No. 618550, filed on May 31, 1994, registered for the territories of 27 countries, including the Russian Federation, for goods and services in International classes 3, 16, and 42;
- NOVOTEL, International Trademark No. 767863, filed on August 21, 2001, registered for the territories of 20 countries, including the Russian Federation, for goods and services in International class 38;
- NOVOTEL, International trademark No. 785645, filed on June 25, 2002, registered for the territories of 16 countries for goods and services in International class 43.
Complainant operates the domain name <novotel.com>, registered on April 10, 1997.
The Domain Name was registered on September 19, 2007.
5. Parties’ Contentions
Complainant is the European leader and one of the world’s largest business organizations in the field of travel, tourism and corporate services. Complainant owns about 4,000 hotels in 90 countries worldwide. NOVOTEL, a well-known trademark for hotels and restaurants, is Complainant’s international four-star brand, used by 387 hotels in 61 countries, including three hotels in the Russian Federation. Complainant operates the website “www.novotel.com” and offers Internet users a quick and easy finding and booking of its hotels. Novotel hotels are present in the main international business centers, in city centers and outskirts, close to main roads, airports, and at many tourist destinations. In 2007, new Novotel hotels started operation in Istanbul, Casablanca and the Principality of Monaco.
According to Complainant, the Domain Name is confusingly similar to Complainant’s NOVOTEL trademark, reproducing it entirely. The addition of the term “adelaide” leads people to think that the Domain Name relates to the Novotel hotel located in Adelaide, Australia.
In Complainant’s submission, Respondent has no rights or legitimate interests in respect of the Domain Name. It is in no way affiliated with Complainant or authorized by the latter to use and register any domain name incorporating Complainant’s trademark. Respondent has no prior rights or legitimate interests in the Domain Name. Respondent is not known by the name “Novotel” or any similar term. Respondent is not making any legitimate or fair use of the Domain Name, and could not reasonably pretend it was attempting to conduct a legitimate activity. The Domain Name redirects Internet users to a website offering information on tourism and hotel services where competitors of Complainant are presented. Thus, the only reason why Respondent registered and used the Domain Name was to benefit from the reputation of Complainant and its NOVOTEL trademark.
Complainant contends that, in view of the world-wide notoriety of the NOVOTEL trademark, Respondent knew or must have known it at the time it registered the Domain Name. The combination of the words “novotel” and “adelaide” indicates Respondent had Complainant in mind while registering the Domain Name. Such an inference is further supported by the content of the website at the Domain Name where competitors of Complainant are advertised. A finding of bad faith can be made where Respondent “knew or should have known” of Complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in which it had no rights or legitimate interests.
Internet users looking for Complainant are likely to be confused and mislead by the Domain Name when searching the Internet for services offered by Complainant under the NOVOTEL trademark. This demonstrates that Respondent intentionally attempted to attract Internet users to its website by creating confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
On November 13, 2007, Complainant sent a cease-and-desist letter to Respondent, and requested the transfer of the Domain Name to it. On November 20, 2007, Respondent answered the request, pretending to have no knowledge of the NOVOTEL trademark, and asked EUR 3,000 for the transfer of the Domain Name to Complainant. On November 27, 2007, Complainant indicated its willingness to reimburse to Respondent the registration fee for the Domain Name in the amount of EUR 50. This message was never answered. According to Complainant, Respondent’s request of the amount of EUR 3,000 for the transfer of the Domain Name indicates Respondent’s bad faith, as this amount is in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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 Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences there from as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence and has thus established its rights in the NOVOTEL trademark, registered in many countries. The Panel acknowledges this trademark as widely-known in relation to hotel services.
It is a common practice under the Policy to disregard the “.com” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i).
The Domain Name contains the combination of words “novotel” and “adelaide”. The first part is identical to Complainant’s trademark, and the second part is identical to the geographical term “Adelaide”. As stated by the Panel in Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507: “The addition of the name of a geographical suffix to a trademark, such as the addition of “India” to HONDA, is a common way of indicating subdivisions of global enterprises, or the geographical area that goods are offered under a trade mark. […] Complainant’s trade mark is famous around the globe. The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added.”
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under the Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name.
Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any arguments in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c), is present in his favor.
In fact, the only information available about Respondent is the Whois information, provided by the Registrar, and the content of the website at the Domain Name.
The Whois information contains no evidence that Respondent is commonly known by the Domain Name.
NOVOTEL is widely-known around the world as a trademark for hotels. It is registered in many countries, including the Russian Federation, of which Respondent is a national. The website linked to the Domain Name is dedicated to providing tourist and other similar information about Adelaide in Australia. Notably, it contains information about many hotels in the area, including various competitors to Complainant.
Considering the confusing similarity between the Domain Name and Complainant’s trademark and the content of the website at the Domain Name, it is very likely that Respondent was well aware of Complainant and its trademarks, and acquired and used the Domain Name mainly taking into account its goodwill and value for Complainant. Such actions may not be regarded as bona fide, and the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out certain circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, the following circumstances are provided as instances of registration and use in 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
(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 discussed above, Respondent is most likely to have been aware of Complainant’s widely-known NOVOTEL trademark. The Domain Name is confusingly similar to this trademark, and is linked to a website offering the services of competitors to Complainant. Taking this into account, the Panel is of the opinion that by creating a likelihood of confusion with it as to the affiliation of its website, Respondent has attempted to extract undue commercial gain, and has thus acted in bad faith. See, e.g., Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601.
As contended by Complainant, Respondent has offered the transfer of the Domain name for the amount of EUR 3,000. This sum is obviously well in excess of any conceivable out-of-pocket costs directly related to the registration of the Domain Name. This conduct of Respondent further supports a finding of bad faith on its behalf.
On these grounds, and in the absence of any contentions or evidence to the contrary, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
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 <novoteladelaide.com> be transferred to Complainant.
Dated: July 24, 2008