WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Adam Smith
Case No. D2016-0015
1. The Parties
Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
Respondent is Adam Smith of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thenovotelgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 3, 2016.
The Center appointed David Perkins as the sole panelist in this matter on February 11, 2016. 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
4.A.1 Complainant operates more than 3,600 hotels in 92 countries worldwide. The group includes the hotel chains Pullman, Novotel, Mercure and Ibis.
4.A.2 The Novotel chain was created in 1967. It is a 4-star international brand which caters for business and leisure customers. There are 414 Novotel hotels in some 59 countries providing a total of 79,678 rooms. The hotels are located in the heart of major international cities, business districts and tourist destinations. In the Americas, Complainant operates 28 Novotel hotels made up as to 18 in South America, 2 in Mexico, 1 in the United States of America and 7 in Canada.
4.A.3 Complainant is the proprietor of, inter alia, the following registered trademarks:
Classes of goods/services
Dates of Application/ Registration
United States of America
Filed: April 24, 1991/ Registered November 9, 1993
Filed and Registered July 26, 1989
The NOVOTEL international trade mark is registered in 44 countries.
4.A.4 Complainant is also the registrant to the following domain names:
<novotel.com> registered on April 10, 1997.
<novotel.us> registered on April 19, 2002.
Correspondence between the Parties
4.A.5 Complainant addressed a cease & desist letter to Respondent dated July 22, 2015 by both registered post and email. No reply was received from Respondent. The registered letter was returned undelivered due to insufficient address provided in the WhoIs records.
4.A.6 Subsequently, Complainant discovered two other sub-domains, <cairoairport.thenovotelgroup.com> and <novotelhalgonbay.thenovotelgroup.com> and on December 28, 2015 sent a further cease & desist email to the Registrars of those domain names. Again, no reply was received. Those domain names resolve to fake websites dedicated to Complainant’s Novotel hotels in Cairo and Halgonbay.
4.B.1 In the absence of a Response, what is known of Respondent appears from the Complaint and its Annexes.
4.B.2 The disputed domain name was created on December 5, 2014. According to the Complaint, presently the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 Complainant’s case is that the disputed domain name is confusingly similar to the NOVOTEL trade mark. First, the disputed domain name incorporates that trade mark in its entirety. Complainant cites decisions under the Policy where it has been held that incorporation of a complainant’s trade mark in its entirety is sufficient to establish confusing similarity.
5.A.2 Second, Complainant says that addition of the definite article and the generic word “group” is insufficient to avoid a finding of confusing similarity. Again, the Complainant cites decisions under the Policy where confusing similarity has been held notwithstanding the addition of such generic terms, including decisions specific to the word “group”: Merck KGaA v. Virginia Cross, WIPO Case No. D2013-1294, Stockmann Plc v. Asep Saepul, WIPO Case No. D2012-0323, Audi AG v. eTraffic Management, Inc., WIPO Case No. D2007-0868 and ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim, WIPO Case No. D2006-1001.
5.A.3 Finally, Complainant cites decisions under the Policy establishing that addition of the Top-Level Domain “.com” is not to be taken into account when assessing confusing similarity.
Rights or Legitimate Interests
5.A.4 Complainant’s case is that Respondent cannot demonstrate rights or legitimate interests in the disputed domain name, whether under paragraph 4(c) of the Policy, or otherwise.
5.A.5 First, Complainant says that it has not licensed or otherwise authorised Respondent to use the NOVOTEL trade mark.
5.A.6 Second, because the disputed domain name is identical to its well-known NOVOTEL trade mark, Complainant says that Respondent cannot reasonably demonstrate an intention to use the disputed domain name in connection with a bona fide offering of goods or services: paragraph 4(c)(i) of the Policy. Complainant cites in support of this assertion a decision under the Policy, which involved ten disputed domain names all of which included the LEGO trade mark. The panelist in that case held that, in the absence of any license or permission from the complainant to use its LEGO trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed: Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
5.A.7 Third, Complainant says that Respondent is not commonly known by the disputed domain name: paragraph 4(c)(ii) of the Policy.
5.A.8 Fourth, because the disputed domain name is inactive, Complainant says that Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii) of the Policy.
5.A.9 Fifth, and finally, Complainant cites decisions under the Policy where it has been held that, where a respondent fails to respond to “Cease & Desist” correspondence and also fails to respond to a complaint - as is the position in this case - it can be assumed that a respondent has no rights or interests in a disputed domain name.
Registered and Used in Bad Faith
5.A.10 Complainant says that, since its NOVOTEL trade mark is well known worldwide, it is implausible that Respondent was unaware of that mark when he registered the disputed domain name. Further, Respondent’s registration of the two sub-domain names, which resolve to fake websites purporting to be genuine websites for Complainant’s two hotels in Cairo and Halongbay, is - Complainant says - evidence of Respondent’s knowledge of the NOVOTEL trade mark and his bad faith in the registration of the disputed domain name incorporating that mark.
5.A.11 Complainant cites as additional evidence of Respondent’s bad faith his failure to respond to either the cease & desist communications or to the Complaint. By failing to provide a correct address, Respondent is, Complainant says, also in breach of the disputed domain name’s registration agreement, a copy of which is annexed to the Complaint.
5.A.12 As to use in bad faith, Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as accepted authority that passive use of a disputed domain name can constitute use in bad faith and sets out the circumstances enumerated by the panelist as constituting bad faith use by the respondent in that case.
5.A.13 Complainant advances as evidence of Respondent’s bad faith, Respondent’s use of the two sub‑domains summarised in paragraphs 4.A.6 and 5.A.10 above, which Complainant characterises as Respondent’s intention to create confusion among Internet users and says indicates a similar purpose behind potential use of the disputed domain name.
5.A.14 Further, Complainant says that Respondent’s unauthorised use of the well-known NOVOTEL trade mark to attract Internet users to an inactive website cannot be regarded as fair or good faith use.
5.A.15 Still further, where such use of the NOVOTEL trade mark is unauthorised - as it is in this case - Complainant cites decisions under the Policy where the panels have held that, by reason of such lack of authorisation, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.
5.A.16 Complainant also asserts that where - as in this case - the disputed domain name is confusingly similar to Complainant’s NOVOTEL mark, a likelihood of confusion among Internet users can be presumed.
5.A.17 Finally, Complainant asserts that Respondent’s registration of the disputed domain name was likely intended to prevent Complainant from using its NOVOTEL trade marks in a corresponding domain name. Complainant cites in this respect, the Decision in L’Oreal v. Chenxiansheng, WIPO Case No. D2009-0242. In that case the disputed domain name was <lorealfrance.com>. The panelist held that the respondent in that case would have been well aware of complainant’s choice to add “france” to the trade mark L’OREAL but had precluded that by registering the domain name <lorealfrance.com>.
As noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 From paragraph 4.A.3 above, it is clear that Complainant has rights in the NOVOTEL trade mark.
6.6 For the reasons set out in paragraphs 5.A.1 to 5.A.3 above, the Panel finds that the disputed domain name is confusingly similar to the NOVOTEL trade mark.
6.7 Consequently, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 Paragraphs 5.A.5 to 5.A.9 do not require repetition here, save to say that the Panel finds Complainant’s case set out in those paragraphs to be well made out. Accordingly, the Complainant meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 Given the well known status of Complainant’s NOVOTEL mark, the Panel has no hesitation in holding that the disputed domain name was registered in bad faith. Respondent’s registration and use of the two sub-domains only serves to confirm that finding.
6.10 The Panel is satisfied that, taking into account that Complainant’s NOVOTEL trade mark has a strong reputation and is well known, that Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name and the other factors asserted by Complainant in paragraphs 5.A.13 to 5.A.17 above, it is appropriate to come to the same conclusion as did the panel in the Telstra case (supra). Namely, that it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by Respondent that would not be illegitimate, such as by being a passing off or an infringement of Complainant’s rights under trade mark law.
6.11 Consequently, the Complainant meets the requirement of paragraph 4(a)(iii) of the Policy.
For all 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, <thenovotelgroup.com>, be transferred to Complainant.
Date: February 16, 2016