WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. ji kai jun
Case No. D2012-1409
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is ji kai jun of Jiangning, China.
2. The Domain Name and Registrar
The disputed domain name <novotelhshotel.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2012. On July 11, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On July 12, 2012, GoDaddy.com, LLC 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” or “UDRP”), 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 July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2012.
The Center appointed James McNeish Innes as the sole panelist in this matter on August 9, 2012. 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 is a leading provider of economic and mid-scale hotels, and a major provider of upscale and luxury hospitality services. For nearly 45 years, it has provided customers with expertise acquired in this core business. It operates more than 4,200 hotels in 91 countries worldwide and over 500,000 rooms, from economy to upscale. The group includes notable hotel chains such as Pullman, Novotel, Mercure and Ibis. The Complainant operates 110 hotels in China and, as of December 30, 2011 had 18,653 employees in that country. The Complainant owns, among others, the following domain names: <novotel.com>, <novotel.net> and <novotel.org>. It mainly communicates on the Internet via its websites where Internet users can find and book hotel rooms or benefit from other services. The Complainant received the Tourism for Tomorrow Award 2010 from the world Travel and Tourism Council (WTTC). This award recognizes the actions taken by the Accor group in the world in favor of sustainable development.
The Respondent registered the disputed domain name on December 19, 2011.
5. Parties’ Contentions
The Complainant’s contentions include the following
(i) The Complainant owns and operates hotels under the trademark NOVOTEL, which is a well-known trademark protected worldwide in particular in relation to hotels and restaurant services.
The Complainant is the owner of the following NOVOTEL International Trademark registrations across the world and notably China where the Respondent is located
- NOVOTEL No. 785645 designating China, dated of June 25, 2002 and covering services in class 43;
- NOVOTEL No. 875041 designating China, dated of December 9, 2005 and covering services in class 43.
In addition, the Complainant operates, among others, domain names reflecting its trademarks in order to
promote its services
- <novotel.com> registered on April 10, 1997;
- <accor.com> registered on February 23, 1999;
- <accorhotels.com> registered on April 30, 1998;
- <novotelhotels.com> registered on September 4, 2001;
- <novotelhotel.com> registered on November 29, 2001.
The Complainant’s existing trademark registrations are demonstrated by record.
(ii) The disputed domain name is highly similar to the trademark NOVOTEL. The disputed domain name comprises the Complainant’s trademark in its entirety, which previous UDRP panels have considered to be well-known (ACCOR v. Jose Andres Buenfil Gomez, WIPO Case No. D2008-1248; Accor S.A. v. Peter Mason, WIPO Case No. D2008-0957; Accor v. Sergey Fomin, WIPO Case No. D2008-0706).
(iii) The addition of the word “hotel” and the letters “hs” tends to increase the confusion. The adjunction of the term hotel is not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademark. On the contrary, the confusion is heightened by adding generic word “hotel” because the term is descriptive of the services provided by the Complainant in relation to the trademark.
(iv) The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register it’s trademark, or to seek registration of any domain name incorporating the mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of several NOVOTEL trademarks preceded the registration of the disputed domain name <novotelhshotel.com> by years.
(v) Given the fame of the Complainant’s trademark NOVOTEL, the Respondent could not have a legitimate contemplated use for offering goods or services at the disputed domain name. The disputed domain name currently resolves to an inactive page which is not used and there is no preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
(vi) Moreover, the Respondent is not commonly known by the name “novotel” or in any way affiliated with the Complainant, nor authorized or licensed to use the NOVOTEL trademark, or to seek registration of any domain name incorporating said marks. In previous UDRP decisions, panels have found that in the absence of any license or permission from the complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
(vii) The sole objective of the Respondent in choosing a domain name that incorporates the trademark NOVOTEL and adding the generic term “hotel” is to benefit from the reputation of the trademark NOVOTEL.
(viii) In light of the reputation of the Complainant’s trademark NOVOTEL, the Respondent’s reproduction of the NOVOTEL trademark in its entirety, combined with the generic term “hotel” clearly proves that the Respondent was aware of the existence of the Complainant’s trademarks. In many UDRP decisions, panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. Bad faith has already been found where a domain name is so obviously connected to a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. It has been held in previous cases that knowledge of a corresponding mark at the time of the registration of the domain name suggests bad faith (Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). Furthermore, a quick search by using the keyword “novotel” would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling, WIPO Case No. D2008-0226).
(ix) The disputed domain name resolves to an inactive page. Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the panel must give close attention to all circumstances of the respondent’s behavior (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) In Telstra, supra, the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name. These criteria apply to the present case; the trademark is well known and it is very unlikely that the Respondent will manage to demonstrate any serious actual or contemplated good faith use by it of the disputed domain name during the proceedings following the filing of the present Complaint. The Respondent has had plenty of time to expose his opinion, which it has not done.
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 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 a 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 service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name <novotelhshotel.com> is confusingly similar to the Complainant’s trademark NOVOTEL;
(b) The disputed domain name comprises the Complainant’s trademark in its entirety. The addition of the word “hotel” is not sufficient to avoid confusion with the Complainant’s trademark and in fact increases the confusion;
(c) The addition of the letters “hs” is not sufficient to avoid confusion.
The Panel accepts the Complainant’s contentions. The disputed name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) 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
(b) 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
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) 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.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(a)(iii) of the Policy. The Panel finds that the disputed domain name is so obviously connected to the Complainant’s well-known trademark that its very use by the Respondent with no connection to the trademark suggests opportunistic bad faith. The Panel furthermore accepts in the circumstances of the case, the Complainant’s assertion that the Respondent’s passive holding of the disputed domain name satisfies the requirements of paragraph 4(a)(iii) and that the disputed domain name is being used in bad faith. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <novotelhshotel.com be cancelled.
James McNeish Innes
Dated: August 17, 2012