WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Contact Privacy Inc. Customer 0150635183 / Novotel Hotel
Case No. D2018-1717
1. The Parties
The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0150635183 of Toronto, Canada / Novotel Hotel of London, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <hotelnovotels.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 1, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. By email of August 2, 2018, the Complainant requested the Center to suspend the proceeding for a period of 30 days. On the same day, the Center sent a Notification of Suspension to the Parties, indicating that the administrative proceeding was suspended until September 1, 2018. On August 20, 2018, the Complainant requested the Center to reinstitute the administrative proceeding and filed an amended Complaint. The Center sent an email to the Parties stating that the administrative proceeding was reinstituted as of August 20, 2018.
The Center verified that the Complaint together with the amended 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 August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2018.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on September 21, 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 operates more than 4,300 hotels in 100 countries worldwide and over 500,000 rooms, from economy to upscale, spread in more than 20 different brands. The group includes notable hotel chains such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure and Ibis.
It owns numerous trademarks, among which:
- International trademark NOVOTEL No. 542032 registered on July 26, 1989, duly renewed, covering services in class 42; and
- International trademark NOVOTEL No. 785645 registered on June 25, 2002, duly renewed, covering services in class 43.
In addition, the Complainant carries out its online activities notably through the domain name <novotel.com>, which was registered on April 10, 1997.
On February 9, 2018, the Respondent registered the disputed domain name <hotelnovotels.com>. The disputed domain name does not lead to any active website.
The NOVOTEL trademark has been recognized and can be considered as a well-known trademark.
The Complainant was informed by its affiliate that job offers were posted on the website “http://www.gastroempleo.com/” using emails configured on the domain name <hotelnovotels.com>. These job offers were taken down following the Complainant’s efforts but email servers are still configured, so that a risk of phishing cannot be excluded.
On April 11, 2018, the Complainant sent a cease-and-desist letter to the privacy shield via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the latter to reveal the identity of the real registrant of the disputed domain name, and to transfer it free of cost to the Complainant.
On April 30, 2018, the Complainant sent notifications for deactivation of the email servers and revocation of the SSL certificates were sent to Email servers provider and SSL provider in order to avoid potential phishing actions.
Neither the Respondent nor the hosting provider responded to any of those letters.
5. Parties’ Contentions
The Complainant first asserts that the domain name is confusingly similar to its NOVOTEL mark as it entirely incorporates the trademark. The addition of the generic term “hotel” and the letter “s” to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s NOVOTEL trademark.
The Complainant then affirms that the Respondent has no rights or legitimate interests in the disputed domain name. It is not commonly known under that name and has never been licensed or authorized in any way by the Complainant to use the NOVOTEL mark. Furthermore, email servers have been configured on the disputed domain name, thus aggravating the risk of phishing actions from the Respondent, a practice intended to defraud consumers into revealing personal and financial information. Consequently, the disputed domain name is not used in any type of legitimate business or services. It deceives consumers, who incorrectly understand that they are referred to the Complainant’s bona fide services.
Finally, the Complainant considers the disputed domain name <hotelnovotels.com> to have been registered and to be used in bad faith. Considering the fame of the NOVOTEL trademark, the Respondent was aware of its existence when it registered the disputed domain name. The uses made of the disputed domain name as described above, which demonstrate an attempt of the Respondent’s to pass off the Complainant’s website as part of a phishing scheme, evidence that the disputed domain name was used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds several trademarks in jurisdictions throughout the world consisting of the term NOVOTEL.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive.
Such happens to be the case. The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of merely descriptive term such as the term “hotel” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several NOVOTEL trademarks that enjoy a worldwide reputation and amount to well-known trademarks. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, considering the fame of the Complainant’s trademarks, a legitimate business is hardly conceivable.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s NOVOTEL trademarks enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the NOVOTEL mark, there is no doubt that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain name and use it in good faith. The configuration of email servers on the disputed domain name in order to steal valuable information such as credit cards from the Complainant’s clients through the use of an email address rather demonstrates the opposite, i.e. that the Respondent is engaged in a phishing scheme. Panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company the customers of which are being misled and deceived into believing they are dealing with the owner of the trademark. Consequently, Panels have further concluded that the use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith (OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 and, The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093).
Consequently, the Panel is of the opinion that the disputed domain name <hotelnovotels.com> has been registered and is being used in bad faith under the 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 <hotelnovotels.com> be transferred to the Complainant.
Date: October 7, 2018