WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. WHOIStrustee.com Limited / Domain Administrator, Beyond the Dot LTD
Case No. D2015-0279
1. The Parties
Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Domain Administrator, Beyond the Dot LTD of Hong Kong, China.1
2. The Domain Name and Registrar
The disputed domain name <novotelqueenstown.kiwi> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 24, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 31, 2015. 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 Accor is a hotel operator that operates more than 3,600 hotels in 92 countries. Complainant owns a number of hotel chains under such brand names as "Pullman", "Novotel", "Mercure", and "Ibis". Complainant's Novotel brand of hotels is considered to be a midscale brand for business and leisure travelers. Complainant currently operates nearly 408 Novotel hotels and resorts in 60 countries, including seven Novotel hotels in New Zealand. Complainant has submitted as Annex 6 to the Complaint a copy of its New Zealand registration for the NOVOTEL mark, which dates back to November 27, 1995, and an International Trademark registration for the NOVOTEL mark that issued on June 25, 2002 and which extends to a number of countries. Complainant also owns the domain name <novotel.com> which it has used to promote its hotel and related services under the NOVOTEL mark. Lastly, Complainant has submitted as Annex 8 copies of prior UDRP decisions in which panelists have found the Novotel brand to be well-known in relation to hotels.
The disputed domain name was registered on May 1, 2014. Currently, the disputed domain name resolves to a web page offering the disputed domain name for sale or lease.
On August 13, 2014, Complainant's counsel sent a demand letter to Respondent demanding that Respondent cease use of the NOVOTEL mark and cancel the disputed domain name. On August 27, 2014, Complainant received a response to its letter from a domain name broker purporting to act on behalf of Respondent. The broker advised that Respondent was "building a web site" and that he had told the Respondent that "they should arrange to return the domain name to your client forthwith." The broker inquired whether Complainant would be willing to amicably settle the matter by paying the sum of USD 1,777 to cover various claimed acquisition costs. On September 24, 2014, Complainant's counsel sent an email response to the broker advising that while Complainant would not pay for the disputed domain name it would be willing to reimburse the documented registration costs of Respondent. Respondent does not appear to have responded to this communication or to further communications from Complainant regarding the disputed domain name.
5. Parties' Contentions
Complainant asserts that its NOVOTEL mark is well-known internationally and that it has obtained trademark registrations for its NOVOTEL mark for hotel and related services in New Zealand and internationally through an International Trademark registration extended to multiple jurisdictions.
Complainant contends that the disputed domain name is confusingly similar to Complainant's NOVOTEL mark because it contains the NOVOTEL mark in its entirety. Complainant also contends that the addition of the geographical term "Queenstown" with respect to the disputed domain name heightens the confusion because Complainant operates a hotel known as the "Novotel Queenstown Lakeside Hotel" in New Zealand and, accordingly, consumers may believe the disputed domain name is linked to Complainant's hotels in New Zealand. Lastly, Complainant contends that the use of the ".kiwi" generic Top-Level Domain ("gTLD") extension as part of the disputed domain name increases the risk of confusion because it suggests a connection to New Zealand.
Complainant argues that because it has established prior rights in and to the NOVOTEL mark, and has not licensed or authorized Respondent to register the disputed domain name, Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant further contends that Respondent is not commonly known by the disputed domain name, is not in any way affiliated with Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but has merely registered the disputed domain name in order to sell it to Complainant, or a competitor of Complainant, for an amount in excess of the out-of-pocket expenses of registering the disputed domain name.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since it is inconceivable that Respondent was unaware of Complainant and its well-known NOVOTEL mark when it registered the disputed domain name. Complainant argues that such registration of a domain name based on a well-known trademark can only be for the purpose of capitalizing on or taking advantage of Complainant's rights in its NOVOTEL mark. Complainant also contends that Respondent's attempt to sell the disputed domain name to Complainant for USD 1,777, after receiving a demand letter from Complainant's counsel, is proof of Respondent's bad faith and attempt to profit from the disputed domain name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0") states:
"4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant… the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. (WIPO Overview 2.0, paragraph 1.1.) Complainant has provided evidence that it owns a trademark registration for the NOVOTEL mark in New Zealand that issued in November 1995, as well as an International Trademark registration for the NOVOTEL mark that extends to multiple jurisdictions.
With Complainant's rights in the NOVOTEL mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. As an initial matter, there is a question as to whether the gTLD extension within the disputed domain name, ".kiwi", should be disregarded in the analysis of the first element. While UDRP panels commonly disregard the gTLD extension in the analysis of identity or confusing similarity (particularly for gTLD extensions such as ".com", ".org", ".net", ".biz" and ".info"), the new gTLD extensions present an issue as to whether what appears to the right of the dot in a disputed domain name has a bearing on the confusing similarity analysis. Some panelists have already opined that while gTLD extensions are typically disregarded, with respect to the new gTLD extensions these can be considered in certain circumstances in the analysis, particularly where the extension relates in some way to the goods or services associated with Complainant's trademark. See, e.g., The Drambuie Liqueur Company Limited v. Glen Hammond, WIPO Case No. D2015-0063 (<drambuie.scot>); Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (<snickers.clothing>); Nvidia Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org, WIPO Case No. D2014‑1171 (<geforce.graphics>); The Football Association Premier League Limited v. c/o Woistrustee.com Limited/Domain Administrator, Beyond the Dot, WIPO Case No. D2014-1222 (<premierleague.club>); Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>); Societe du Figaro S.A. v. Michael Ehrhardt / Mike Hard, WIPO Case No. D2015-0094 (<lefigaro.paris>). Other panelists, however, have taken the view that the new gTLD extensions should ordinarily be disregarded in the assessment of the first element regardless of the relation (or lack of) to the goods and services associated with the complainant's trade mark. See, e.g., Koninklijke KPN N.V. v. Marijn Vlug, WIPO Case No. D2014-1116 (<kpn.international>); Sanofi v. Benoit Menetrieux, WIPO Case No. D2014-1288 (<sanofi.international>); expedia, Inc. v. Abdenbayeva Aigerim, WIPO Case No. D2014-2152 (<expedia.club>); Volkswagen AG v. Tim Jevon, WIPO Case No. D2014-2155 (<volkswagen.kiwi>).
In this Panel's view, there is no hard fast rule requiring a panelist to disregard or consider a gTLD extension. The Policy does not endorse or specify a particular approach and, indeed, a number of Panelists have noted as much and in some instances have conducted the analysis of the first element using both approaches. See, e.g., Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>); Novartis v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1737 (<novartis.buzz>); Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650 (<sofitel.email>). As the new gTLD extensions often consist of a common descriptive word that can communicate a purpose for the extension or which relates to a particular category or origin of a product or service, it appears to this Panel that a gTLD extension should not be automatically disregarded and, in appropriate circumstances, should be considered as part of the analysis of confusing similarity. The Panel notes, however, that it is difficult to conceive of a new gTLD extension that would obviate confusing similarity under the first element simply by virtue of its being outside of the goods and services offered by a complainant (such an approach, for example, would run contrary to the concepts of "expanding product lines" or "bridging the gap"). Moreover, the Panelist also notes that it may be appropriate to consider the use of a gTLD extension in a disputed domain name as part of the analysis of the second and third elements of the Policy, as the extension used may have a bearing on a respondent's intent in registering or using a domain name – particularly where the use of the gTLD extension relates specifically to the products or services of the complainant's trademark.
In the instant proceeding, the disputed domain name is confusingly similar to the NOVOTEL mark as it incorporates the NOVOTEL mark in its entirety at the head of the disputed domain name. The addition of the geographical term "Queenstown" does not distinguish the disputed domain name from Complainant's NOVOTEL mark and in fact heightens the confusion by suggesting that the disputed domain name is related to Complainant's NOVOTEL hotel in Queenstown, New Zealand. See, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Indeed, the use of the gTLD ".kiwi" further reinforces this conclusion, as the extension (which is promoted as the extension for New Zealanders) suggests a connection to New Zealand. The Panel therefore finds that Complainant has satisfied the requirements of 4(a)(i) in establishing its rights in the NOVOTEL mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must first make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is clear that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or noncommercial or fair use of the disputed domain name in connection with any products or services. Rather, Respondent has merely placed a web page at the disputed domain name offering the disputed domain name for sale or lease and has sought to obtain from Complainant, through a domain name broker, a sum well in excess of any registration costs that Respondent would have paid to register the disputed domain name.2
In addition, beyond the fact that the available evidence of record shows that Respondent has no connection or affiliation with Complainant, and has never obtained any permission to register or use the disputed domain name, it is inconceivable that Respondent was not aware of Complainant's Novotel chain of hotels or of Complainant's rights in the NOVOTEL mark. A simple search of any popular search engine would have quickly revealed Complainant's rights in the NOVOTEL name and mark (which does not seem to be a common term). Thus, in light of Respondent's registration of a domain name consisting of Complainant's well-known NOVOTEL mark with the geographic indicator "Queenstown" that relates to the exact location of one Complainant's hotels in New Zealand, along with the gTLD extension ".kiwi" which suggests a connection to New Zealand, it is more than likely that Respondent was well aware of Complainant's NOVOTEL mark and hotels when it registered the disputed domain name. Indeed, Respondent's domain name broker did not suggest anything to the contrary in his August 27, 2014 response and even advised that he had told Respondent to "return the domain name" to Complainant – thereby suggesting that Respondent and the broker were well aware that the disputed domain name was based on Complainant's NOVOTEL mark.
Given that Complainant has established with sufficient evidence that it owns rights in the NOVOTEL mark and that the NOVOTEL mark has been recognized as well-known, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent's registration and use of the disputed domain name does not constitute a right, legitimate interest or bona fide use and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present its case, has decided not to submit a Response and put forward arguments as to why he should be regarded as having rights or legitimate interests in the disputed domain name, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant's prima facie case. Complainant thus prevails on this element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered a domain name that fully incorporates Complainant's NOVOTEL mark with the geographic term "Queenstown," along with the gTLD extension ".kiwi" which suggests a connection to New Zealand. Such combination of a geographic term and gTLD extension that each relate to the location of one of Complainant's NOVOTEL hotels adds to a likelihood of confusion by suggesting to consumers that the disputed domain name concerns Complainant's NOVOTEL hotels in New Zealand. Given that Respondent more than likely was aware of Complainant and its NOVOTEL mark when Respondent registered the disputed domain name, it is inconceivable that Respondent registered such a confusing domain name by chance. If anything, the evidence suggests that Respondent, (who apparently is based in Hong Kong), specifically targeted Complainant and its well-known NOVOTEL mark, and did so opportunistically and in bad faith.
Moreover, given that the evidence of record shows that Respondent's only use of the disputed domain name has been with a web page offering the disputed domain name for sale or lease and that Respondent, through a domain name broker, sought to transfer the disputed domain name to Complainant for USD 1,777 (a sum well in excess of documented out-of-pocket costs for the disputed domain name), the Panel can only conclude that Respondent's actions have been undertaken in bad faith. The Panel also finds that Respondent's failure to respond to Complainant's offer to reimburse the registration costs of the disputed domain name, and its decision to default in this proceeding, is further evidence of Respondent's continued bad faith in this matter.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders, pursuant to Complainant's request, that the disputed domain name <novotelqueenstown.kiwi> be canceled.
Date: April 14, 2015
1 Although this proceeding includes "WHOIStrustee.com Limited" in the caption, the registrant of the disputed domain name according to 1API GmbH, the registrar of the disputed domain name, is "Domain Administrator, Beyond the Dot Ltd". Consequently, for purposes of this decision the actual Respondent is only "Domain Administrator, Beyond the Dot Ltd".
2 While the domain name broker appearing for the Respondent claimed in his August 27, 2014 response to Complainant's demand letter that the Respondent is working on a website, there is no evidence of record that Respondent developed or was working on any website beyond a web page that offers the disputed domain name for sale or lease.