The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Jose Andres Buenfil Gomez, Cancun, Mexico.
The disputed domain name <novotelplaya.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 15, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2008.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on October 6, 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.
The Complainant is a business organization that provides travel, tourism and related corporate services. The Complainant owns more than 4,000 hotels in 90 countries worldwide. NOVOTEL is one of the Complainant's chains of hotels. NOVOTEL is present in 58 countries around the world. Accor has a Novotel hotel in the city of Cancun, Mexico.
The Complainant is the owner of the domain names <www.novotel.com>, <www.novotelhotels.com> and <www.novotelresort.com>, which clearly reflects its trademark.
The Complainant is the owner of numerous trademark registrations throughout the world covering the name NOVOTEL such as the following:
- Mexican NOVOTEL Trademark n° 387947, covering class 39
- Mexican NOVOTEL Trademark n° 567745, covering classes 35, 40, 41, 43, 44 and 45
- Mexican NOVOTEL Trademark n° 564413, covering class 35, 40, 41, 43, 44 and 45
- International NOVOTEL Trademark + logo n° 352918, covering classes 11, 16, 19, 20, 28, 29, 42
- International NOVOTEL Trademark n° 542032, covering class 42
- International NOVOTEL Trademark + logo n° 564565, covering classes 16, 20, 21, 25, 35, 38, 39, 41, 42
There is no information available about the Respondent except for that contained in the Complainant and in the Registrar's records which essentially provides only the name and contact details of the Respondent.
The disputed domain name directs to a webpage for rental car called Easy Way Rent-A-Car, a company which is located in Cancun, Mexico.
The Complainant sent a cease-and-desist letter on November 14, 2007 requesting amicably the transfer of the domain name <novotelplaya.com>, based on the Complainant's trademark rights. According to Complainant, the Respondent never answered such request.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.
The Complainant states that it is the European leader and one of the world's largest business organizations in travel and tourism. It owns more than 4,000 hotels in 90 countries worldwide, and employs 170,000 people.
The Complainant owns numerous international NOVOTEL trademarks. The Complainant has submitted copies of the registration certificates in respect of the above-referenced registered trademarks.
NOVOTEL is one of the Complainant's chains of hotels, which are present in 58 countries around the world, with nearly 400 hotels. The NOVOTEL Hotels mainly communicates online via its website “www.novotel.com” in order to allow the Internet users a quick and easy finding and booking of its hotels.
The Complainant sent a cease-and-desist letter requesting amicably the transfer of the domain name <novotelplaya.com>, based on its trademark rights, however, the Respondent never answered such request, even after numerous reminders.
In view of the above the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
a) The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights
The Complainant claims that the “.com” portion of the domain name must be ignored when assessing the identity of a mark or domain name and that similarity is determined by comparing the mark at issue with the domain name. It also claims that the addition of a generic denomination such as “playa”, which means beach in English, is not sufficient to avoid confusion, especially when added to a famous trademark.
The Complainant asserts that given the above, there can be no doubt that the Respondents unauthorized use of the coupling of these two words “Novotel” and “playa” creates a likelihood of confusion, since consumers may think that this domain name is related to Complainant's services. Consequently the disputed domain name is confusingly similar to the NOVOTEL trademark.
The Complainant asserts that the Respondent is not affiliated with the Complainant in any way. It has not authorized the Respondent to use nor register its trademarks or to seek the registration of any domain names incorporating said trademarks.
The Complainant also asserts that the Respondent makes no legitimate non-commercial or fair use of the domain name, since the disputed domain name directs to the Respondent's webpage offering rental cars in Cancun, Mexico.
Lastly, the Complainant asserts that the Respondent did not rebut the allegations set forth by Complainant and has not provided the Panel with any explanation as to whether there are indeed legitimate reasons for his choice of the domain name.
Therefore, the Respondent has no legitimate interest in the domain name.
The Complainant claims that it would be difficult to believe that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name given the very precise combination respectively of the trademark NOVOTEL and the generic term “playa”. Given the businesses of the Complainant and that of the Respondent it seems clear that the Respondent chose such a name in order to attract a specific group of Internet users to its website so that he would be able to profit from it.
The Complainant also claims that in light of the use of this domain name and the lack of response from the Respondent, the Respondent most likely registered the domain name in bad faith and was perfectly aware that it was infringing the Complainant's rights.
The Respondent did not reply to the Complainant's contentions.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) 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) the Respondent has no rights or legitimate interests in respect of the domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
(i) The Panel finds that the Complainant has established that it is the owner of the registered trademark NOVOTEL based on the evidence provided by the Complainant (annex 21, 22 and 23).
(ii) The disputed domain name consists of two different words, one consisting of the Complainants registered trademark and other of a generic term “playa”.
The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants trademarks.
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant has stated that the disputed domain name website directs to a rental car service business provided in Cancun, Mexico. The Complainant asserts that the Respondent is not affiliated with the Complainant in any way nor has it authorized the Respondent to use or register its trademarks or to seek the registration of any domain names incorporating said trademarks. The Complainant finally claims that the Respondent makes no legitimate non-commercial or fair use of the domain name and therefore has no legitimate interest in the domain name.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element, Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name.
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of two words, “Novotel” and “playa”. The first is a registered trademark owned by the Complainant; the second is a generic term that in the English language means beach. It is well known that Cancun is a tourist destination known for its beaches.
The Complainant has stated that a Novotel hotel exist in the city of Cancun, the place of residence of the Respondent. Consequently, it is difficult to believe that the juxtaposition of these two terms is a mere coincidence, taking into consideration that the Respondent has its address in the city of Cancun, and therefore one can reasonably conclude that the Respondent had knowledge of the existence of the Cancun Novotel hotel and of Complainants' trademark, demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to him since the day the Complainants counsel contacted the Respondent and informed him of Complainants prior rights. Therefore all use after such notification suggests use of the domain name in bad faith. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant's marks and wanted to refer to the Complainant.
Moreover, the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the domain name and the cease of use of the trademark. However, to date the Respondent has not removed such mention and remains using the trademark of the Complainant, in circumstances in which the Complainant has clearly stated that they have never given the Respondent authorization to use such trademark.
In addition, the Panel accessed the Respondents website and has noted that the webpage effectively provides rental car services in the city of Cancun. The Panel considers that by registering a domain name corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet user's to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant's reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent's attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the services provided on the website.
Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the domain name in dispute has been registered and used 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, <novotelplaya.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: October 20, 2008