WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Shinwute K.
Case No. D2013-1729
1. The Parties
Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Shinwute K. of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain names <novotelyangon.com> and <novotelyangon.net> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2013. On October 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 7, 2013, 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 the Respondent of the Complaint, and the proceedings commenced on October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2013.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on November 25, 2013. 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 operates more than 3,500 hotels in 92 countries worldwide, from economy to upscale. The Accor group includes the NOVOTEL hotel chain.
Accor operates 398 NOVOTEL hotels in the world and plans to open two new NOVOTEL hotels in Burma. One of the hotels, Novotel Yangon, will be in the city of Yangon. The construction of this hotel is due to be completed in December 2013 and to open in 2014. Articles about the construction and opening of the hotel have been circulating on the Internet since February 2013. Accor operates 13 NOVOTEL hotels in Thailand, where Respondent is located.
Complainant owns the following NOVOTEL trademark registrations:
- International trademark No. 618550, dated May 31, 1994, covering goods and services in various classes;
- International trademark Novotel No. 542032, dated July 26, 1989, covering goods and services in various classes;
- International trademark No. 1039192, dated April 20, 2010, covering goods and services in various classes;
- National trademark in Thailand NOVOTEL No. SM12087 registered July 12, 1994 covering goods and services in various classes.
Complainant also owns, among others, the domain names: <novotel.com>, registered on April 10, 1997, and <novotel.net>, registered on April 02, 2000. It mainly communicates on the Internet via these websites where Internet users can find and book hotel rooms or benefit from other services.
Respondent registered the Domain Names <novotelyangon.com> and <novotelyangon.net> on February 23, 2013.
After discovering the Domain Names and Respondent’s registrations, Complainant sent Respondent via registered letter and email a cease-and-desist letter dated April 5, 2013, asking Respondent to immediately cease using and to cancel the Domain Names, which at the time, pointed to parking pages. Upon receipt of the cease-and-desist letter, the registrar deleted the parking pages. Respondent never replied despite Complainant’s numerous reminders.
The Domain Names remain registered but currently resolve to inactive websites which indicate that the site is not currently available.
5. Parties’ Contentions
Complainant contends that it owns and operates a number of hotels worldwide under its NOVOTEL trademark and that its mark is well-known worldwide in relation to hotels and restaurant services.
Complainant contends that the Domain Names are confusingly similar to Complainant’s NOVOTEL trademark, reproducing Complainant’s trademark in its entirety with the addition of the element “yangon.”
The addition of geographic terms, Complainant asserts, is insufficient to distinguish the Domain Names. The addition of the geographic term “yangon” here increases the likelihood of confusion because it would lead others to think that the Domain Names refer to Complainant's Novotel Yangon Hotel which is due to open in Yangon, Burma in early 2014. Internet users could come to believe that the Domain Names belong to or are associated with Complainant and have been registered in view of the opening of its new hotel.
Complainant further contends that the addition of the extensions “.com” and “.net” are not to be taken into consideration when examining the identity or similarity between its trademark and the Domain Names.
Complainant contends that Respondent has no rights or legitimate interests in respect to the Domain Names. In support of this assertion, Complainant asserts the following:
Respondent is not commonly known by the name “Novotel,” is not in any way affiliated with Complainant, nor is he authorized or licensed to use the NOVOTEL trademark or to seek registration of any domain name incorporating said trademark.
Respondent has no prior rights or legitimate interests in the Domain Names. The registration of several NOVOTEL trademarks preceded by years the registration of the Domain Names.
The Domain Names are so identical to Complainant’s well-known trademark NOVOTEL that Respondent cannot reasonably claim it intended to develop a legitimate activity through the Domain Names.
Respondent did not demonstrate use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. The Domain Names previously resolved to parking pages displaying pay-per-click links that directed Internet users to commercial sites related to hotels, which is Complainant’s main field of activity. These links were very likely to generate revenues for Respondent. Such circumstances do not represent use of the Domain Names in connection with a bona fide offering of goods or services.
The fact that after receipt of Complainant’s cease-and-desist letter the Registrar deleted the parking pages and the Domain Names now resolve to inactive pages does not dismiss the fact that Respondent did not demonstrate use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services.
Complainant attempted to contact Registrant by letters and email, but Respondent never replied. It can therefore be assumed that Respondent has no rights or legitimate interests in the Domain Names or he would have vigorously defended his rights by quickly replying to Complainant’s cease-and-desist letter.
Complainant contends that Respondent both registered and used the Domain Names in bad faith. Complainant further contends as follows in support of this assertion:
It is implausible that Respondent was unaware of Complainant or its trademarks when he registered the Domain Names. Complainant is well-known throughout the world, including in Burma, where Complainant is in the midst of constructing and opening two new NOVOTEL hotels, one based in the Yangon area.
Complainant’s NOVOTEL trademarks are widely-known worldwide. Respondent’s reproduction of the NOVOTEL trademark in its entirety, combined with the geographic term “yangon,” which has been used to refer to Complainant’s new “Yangon Hotel” project, proves that Respondent was aware of the existence of Complainant’s trademark and its hotel project in the Yangon area.
Bad faith has been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
Respondent has not replied to Complainant’s cease-and-desist letters and reminders which may be considered to give rise to an inference of bad faith.
Respondent used the Domain Names with knowledge of Complainant’s reputation and trademark and its project in Burma as well as in Thailand where Respondent is located.
The Domain Names are confusingly similar to Complainant’s trademark. A likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site. Many Internet users attempting to visit Complainant’s websites have undoubtedly ended up on the web pages set up by Respondent.
The Domain Names previously resolved to parking pages displaying pay-per-click links which directed Internet users to commercial sites related to hotels, Complainant’s main field of activity. These links likely generated revenues for Respondent. Respondent thus was intentionally exploiting the user’s confusion between Complainant’s trademark and the Domain Names in order to obtain a commercial benefit. It is more likely than not that Respondent’s primary motive in registering and using the Domain Names was to capitalize on or otherwise take advantage of Complainant’s trademark rights through the creation of confusion in the mind of Internet users.
The fact that after receipt of Complainant’s cease-and-desist letter the Registrar deleted the parking pages and that the Domain Names currently resolve to inactive pages is irrelevant for a finding of bad faith use by Respondent. Passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii). In such cases the Panel must give close attention to all circumstances of Respondent’s behavior, including that no possible good faith use of the domain names is possible in view of the notoriety of Complainant’s trademark; Respondent has not provided evidence of actual or contemplated good faith use of the Domain Names; Respondent never replied to the cease-and-desist letter sent by Complainant; and Respondent prevents Complainant from reflecting Complainant’s trademark in the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint, in Respondent’s registration information available in the publicly available WhoIs database and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), a respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the 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 Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant possesses legal rights in its NOVOTEL trademarks with respect to hotel services by reason of international and national registrations and long term use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1. (Ownership of a registered trademark generally satisfies the Policy requirement of having trademark rights). Based upon the evidence of record and noting the decisions of prior UDRP panels, the NOVOTEL trademark is well known in connection with hotels. See, 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; Accor v. Ning Yang, WIPO Case No. DCO2011-0004.
Both of the Domain Names incorporate the NOVOTEL trademark in its entirety, with identical spelling. The Domain Names each add to Complainant’s trademark the word “yangon” which is the name of a principal city in Burma where Complainant is building a new hotel that is scheduled to open soon. The addition of a geographic name to another’s trademark in a domain name is held generally to be insufficient to distinguish the domain name from the trademark or to negate confusing similarity between the two. See WIPO Overview 2.0, paragraph 1.9; ACCOR v. Vu Duy Truong, N/A, WIPO Case D2011-0093, and Accor v. Lee Dong Youn, WIPO Case D2008-0705 and Accor S.A. v. jacoop.org, WIPO Case D2007-1257. This is especially true here where the geographic name refers to a place where Complainant is particularly active with the construction and impending opening of a new facility that will operate under the NOVOTEL trademark. In this case, the use of “yangon” with “novotel” tends to enhance rather than diminish confusion.
The addition of “.com” and “.net” in the Domain Names are of no consequence in determining whether there exists confusing similarity between the domains and the trademark.
The Domain Names carry a strong likelihood of confusing the Internet user that those Domain Names belong to or are associated with Complainant and its NOVOTEL hotels, or, in particular, the new NOVOTEL hotel in Yangon, Burma. The Domain Names are, therefore, confusingly similar to Complainant’s NOVOTEL trademark. Complainant has established the first element of its case.
B. Rights or Legitimate Interests
Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Names. See WIPO Overview 2.0, paragraph 2.1. However, where a complainant makes a prima facie case that the respondent does not possess such rights or interests, the burden of production shifts to the respondent to demonstrate that he does in fact possess such rights or legitimate interests. Id. Where, as here, a respondent fails to come forward with allegations or evidence to demonstrate that he possesses such rights or interests, the complainant’s prima facie case will usually be found sufficient to meet the complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondents of the dispute, Respondents’ 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
(ii) Respondents have been commonly known by the domain name, even if Respondents have acquired no trademark or service mark rights; or
(iii) Respondents 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.
Complainant can make out a prima facie case by negating such circumstances. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Complainant’s evidence negates that Respondent has used or prepared to use the Domain Names in connection with a bona fide offering or goods and services. On the contrary, Complainant shows that the Domain Names were first used only in connection with parking pages that displayed links to other hotels and held the potential to generate click-through revenues for Respondent. Such exploitation of confusion with another’s trademark for one’s own commercial gain is not considered a bona fide offering of goods or services, a legitimate noncommercial use, or a fair use of the Domain Names that would confer upon Respondent rights or legitimate interests in the Domain Names. See WIPO Overview 2.0, paragraph 2.6.
The fact that the parking pages were subsequently eliminated and that the Domain Names now resolve to inactive pages does not indicate that Respondent has demonstrated any intent to use the Domain Names in connection with a bona fide offering of goods or services or that Respondent is making any sort of noncommercial or fair use of the Domain Names.
Complainant contends that Respondent is not commonly known by the name “Novotel,” is not in any way affiliated with Complainant, nor is he authorized or licensed to use the NOVOTEL trademark, or to seek registration of any domain name incorporating said mark. There is nothing in the record to contradict the contentions of the Complaint. The Panel thus accepts those contentions as fact.
Respondent having failed to demonstrate any of the factors under paragraph 4(c) of the Policy, the Panel finds that Complainant’s prima facie case meets Complainant’s burden under paragraph 4(a)(ii) of the Policy and considers that Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Respondent registered two Domain Names, each of which included Complainant’s NOVOTEL trademark in its entirety and each of which was confusingly similar to that trademark. As noted above, the NOVOTEL mark is considered to be well known. It is also a strong mark in that it does not appear to be a common word in English. Neither has it been shown to be a common word in any other language. Based on the record, the Panel considers it a reasonable inference that Respondent had knowledge of Complainant, its Novotel-branded hotels, the NOVOTEL trademark and the Novotel hotel being built in the Yangon area, or Respondent would not have chosen to use the NOVOTEL mark in the Domain Names as he did. Respondent has demonstrated no legitimate rights or interests in those Domain Names. See WIPO Overview 2.0, paragraph 3.4.
Previous UDRP panels have found that where a domain name is so obviously connected with a well-known trademark its very use by someone with no connection to the trademark suggests opportunistic bad faith. LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, Sanofi-Aventis v. Nevis Domains LLC. WIPO Case No. D2006-0303.
Further, paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
By using the domain name, you [Respondent] 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 Panel considers the evidence of record sufficient to establish that Respondent registered the Domain Names with the intent of exploiting Complainant’s trademarks and Complainant’s goodwill in those marks to create confusion and divert Internet traffic to web pages that would then generate revenue for Respondent. This constitutes registration of those Domain Names in bad faith.
The foregoing facts and circumstances also establish bad faith use of the Domain Names under paragraph 4(b)(iv) of the Policy.
For a period of time Respondent used the Domain Names, intentionally exploiting Complainant’s rights and goodwill, to create user confusion and divert Internet traffic from Complainant to parking pages featuring links to other hotels for the purpose of generating click-through revenues for himself. This constitutes bad faith use of the Domain Names. See WIPO Overview 2.0, paragraph 3.8.; Lyonnaise de Banque v. Richard J, WIPO Case No. D2006-0142.
The fact that the parking pages have been deleted and the Domain Names now resolve to inactive pages complicates the analysis only slightly. Passive holding does not in itself prevent a finding of bad faith. WIPO Overview 2.0, paragraph 3.2. The Panel must consider all circumstances of the case to determine whether they amount to Respondent’s acting in bad faith. Here, the Panel considers it most relevant that:
Complainant’s trademark is well known;
It is not possible to conceive of any plausible actual or contemplated active use of the Domain Names that would not be illegitimate;
The Domain Name registrations were in bad faith, as considered above;
Respondent previously acted to exploit Complainant’s trademark and user confusion to generate revenue for himself;
Respondent did not reply to Complainant’s cease-and-desist communications; and
Respondent did not reply to the Complaint in this proceeding.
The Panel considers the circumstances in this case to amount to acting in bad faith in the passive holding of the Domain Names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; TV Azteca, S.A.B. de C.V. v. Spiral Matrix, WIPO Case No. D2011-0008.
Based on all of the foregoing facts and circumstances, the Panel considers that Respondent both registered and uses the Domain Names in bad faith and that Complainant has, therefore, proved the third and final element of its case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <novotelyangon.com> and <novotelyangon.net> be transferred to Complainant.
John R. Keys, Jr.
Date: December 9, 2013