WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA v. Dinesh Arsid, Tiny Planet Inc
Case No. D2017-2576
1. The Parties
The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Dinesh Arsid, Tiny Planet Inc of La Palma, California, United States of America ("United States"), internally represented.
2. The Domain Name and Registrar
The disputed domain name <thinknovotel.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 December 22, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2018. The Respondent sent an informal email communication to the Center on December 27, 2017. The Center sent an email regarding possible settlement to the Parties on December 28, 2018. Pursuant to the Complainant's request, the proceeding was suspended from January 2 to February 21, 2018. The proceeding was reinstituted on February 21, 2018, at the request of the Complainant. The Respondent did not submit any substantive response by the specified due date.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 29, 2018. 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 the proprietor of the trademark NOVOTEL in connection with the hotel business. Currently, the Complainant operates circa 450 NOVOTEL hotels in 60 countries.
Details of extensive protection of the Complainant's NOVOTEL trademark, including United States registration number 1803936, registered on November 9, 1993, and International Registration number 542032, registered on July 26, 1989, have been supplied to the Panel.
The Panel has also been supplied with details if extensive use of the Complainant's NOVOTEL trademark internationally.
The disputed domain name was registered on September 17, 2016. The Respondent uses the disputed domain name to redirect towards "www.premiumtollfreevanity.com", offering toll-free vanity phone numbers and other services.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its NOVOTEL trademark, containing the NOVOTEL trademark in its entirety, together with the mere addition of a descriptive or non‑distinctive element, namely the word "think".
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to the Respondent to use its NOVOTEL trademark in connections with a domain name, or otherwise. The Complainant also alleges that the Respondent is not generally known by the disputed domain name.
The Complainant alleges that the disputed domain was registered in bad faith, and is being used in connection with an active website which would be likely to mislead consumers into believing that the goods and services displayed are sponsored or approved by the Complainant.
The Respondent did not formally reply to the Complainant's contentions. In its email communication of December 27, 2017, the Respondent stated, "We have no intention to infringe on anyone's trademark. I would agree with GoDaddy's action to let it expire and get deleted when the domain is expired."
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".com" to be irrelevant in the present case.
It is well-established in prior decisions under the UDRP that the addition of a descriptive or non-distinctive element to a trademark is not sufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel regards the element "think" as clearly such a descriptive or non-distinctive element. As such, the disputed domain name is confusingly similar to the Complainant's NOVOTEL trademark. The Panel consequently finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. The use of the disputed domain name by the Respondent, who clearly has no connection with the Complainant, nor authorization to use its trademarks, to redirect to a commercial website at "www.premiumtollfreevanity.com", does not, in the Panel's view amount to a bona fide offering of goods or services.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has satisfied the Panel that it's NOVOTEL trademark is well-known. The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name found to be confusingly similar to a complainant's well-known trademark, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant's well-known trademark and the disputed domain name is the addition of a descriptive or non-distinctive element, is sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, according, finds that the disputed domain name was registered in bad faith.
The Panel considers that the function of the element "think" in the disputed domain name is an exhortation to "think (of) NOVOTEL", or "think in the NOVOTEL way", or otherwise to direct users towards the NOVOTEL trademark.
The Panel agrees with the panels in, Courtney Kellogg v. Vance Larson, WIPO Case No. D2007-0085 and RuggedCom, Inc. v. LANstore, Inc, WIPO Case No. D2005-0760, to the effect that use of a disputed domain name which contains a trademark in which a complainant has rights, in its entirety, in connection with an active website, which is likely to mislead users into believing that they are connecting to a website legitimately approved or associated with the trademark owner, cannot be use of a domain name in good faith. In the circumstances of the present case, the "exhortation" function of the element "think" in the disputed domain name is regarded by the Panel as an aggravating factor. Even though the goods and services advertised on the website to which the disputed domain name resolves do not directly compete with those of the Complainant, in light of the notoriety of the Complainant's trademark, the Panel finds that there is a high likelihood that Internet traffic destined for the Complainant would be redirected to that website. In the absence of any evidence to the contrary, the Panel finds such use to be in bad faith.
Accordingly, the Panel finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy.
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 <thinknovotel.com> be transferred to the Complainant.
George R. F. Souter
Date: April 12, 2018