WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor SA v. Private Person / Dmitrii Kudacirenov
Case No. DPW2017-0004
1. The Parties
The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Private Person / Dmitrii Kudacirenov of Irkutsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <novotel38.pw> is registered with REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On October 25, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant informed the Center that it had requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center’s communication regarding the language of the proceeding or the Complainant’s submission.
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 November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on December 8, 2017. 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 world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. “Novotel” is the historic brand of the Complainant’s group.
The Complainant the owner of the following trademark registration):
- International trademark for the NOVOTEL mark, No. 542032 registered on July 26, 1989, duly renewed, covering services in class 42; and
- International trademark for the NOVOTEL mark, No. 1246980 registered on February 3, 2015, covering services in class 43.
In addition, the Complainant operates, among others, domain names reflecting its trademark.
The disputed domain name was created on April 28, 2017.
The domain name resolved first to a webpage in Russian with mention “NOVOTEL -Mini Hotel”. The website contained several hotel services including an online booking system of a so-called Novotel hotel found in Irkutsk, Russian federation, a telephone number and an online application requesting leave contact information. An imitation of the NOVOTEL logo was also displayed on the website linked to the disputed domain name. Furthermore, an email server has been configured on the disputed domain name.
On June 22, 2017, the Complainant sent a cease-and-desist letter to Respondent via registered letter and email on the basis of its trademark rights concerning the disputed domain name. The Respondent has not replied, despite several reminders.
On June 22, 2017, the Complainant sent via email, another cease-and-desist letter to the Registrar and the Hosting requesting them to block the access to the website and remove the content infringing its rights. Subsequently, on June 22, 2017, the Complainant sent a cease-and-desist letter by to the Email Server provider requesting it to deactivate the email servers set up for the disputed domain name and/or any other email service linked to that domain name.
The disputed domain name resolves currently to a page indicating that the website is unavailable for one of the following reasons: “- The prepaid period of hosting service is over. - The decision to close was taken by the owner of the site. - The rules of using the hosting service were violated.”
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. It explains that the disputed domain name reproduces the NOVOTEL mark in its entirety with the addition of numerical suffix “38”, which is insufficient to avoid any likelihood of confusion.
Secondly, the Complainant asserts that the Respondent has no right or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not affiliated with it in any way nor has he been authorized or licensed by it to use and register its trademark, or to seek registration of any domain name incorporating the NOVOTEL mark. Moreover, according to the Complainant, the Respondent is not known by the name “Novotel” and has no prior rights or legitimate interest in the disputed domain name. The Complainant also alleges that the Respondent used the disputed domain name to do fake bookings as there is no such hotel at the address indicated on the website. Such behavior cannot be, in the Complaint’s opinion, regarded as a legitimate or fair use of the disputed domain name. In addition, the Complainant claim that as an email server has been configured on the disputed domain name, there might be a high risk that the Respondent is engaged in a phishing scheme.
Thirdly, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the Respondent knew or should have known about the NOVOTEL mark while registering the disputed domain name. The Complainant emphasizes that previous UDRP panels have recognized the worldwide reputation of the NOVOTEL mark, making it unlikely that the Respondent was not aware of the Complainant’s rights in the trademark. Furthermore, the Complainant alleges that the Respondent used the disputed domain name to direct the Internet users to a counterfeiting website in Russian with the mention “NOVOTEL – Mini Hotel” with unofficial online booking services and displaying a telephone number as contact as well as imitation of Complainant’s logo. In the Complainant’s opinion, the Respondent did everything to make his website look official and therefore created a strong likelihood of confusion for the Complainant’s customers who could believe that the disputed domain name is an official website offering authentic services online. The Complainant also points out that the website linked to the disputed domain name contains a fake postal address and a location map of “Novotel – Mini Hotel”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. Here, Complainant is located in France and has no knowledge of Russian. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Additionally, it should be noted that the domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Russian. The Complainant asserted that it is located in France and has no knowledge of Russian. Thus, the Complainant finds that it would be unfairly disadvantaged by being forced to translate to Russian or Ukrainian not only the Complaint, but also the relevant content of the websites.
Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name <novotel38.pw> contains the NOVOTEL mark in its entirety, with an addition of the numbers “38”. The previous UDRP panels have accepted that the numerical suffix does not have any impact on the overall impression of the domain name dominated by the trademark and have held that the domain name is therefore confusingly similar to the trademark. (See LEGO Juris A/S v. Yuewei Wang, WIPO Case No. D2011-1920; Lancôme Parfums Et Beauté Et Compagnie v. Mai Jia Chang, Zhang Weilin, Yang Hao, Xu xu, She ru, Whois Privacy Protection Services Inc / fang fang, WIPO Case No. D2013-0021; Zippo Manufacturing Company v. PrivacyProtect.org, Domain Admin/jiangdaoqian, WIPO Case No. D2013-2240).
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.pw” may generally be disregarded as a gTLD being simply a necessary component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s NOVOTEL mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition [“WIPO Overview 3.0”], section 2.1 and cases cited therein).
In the Panel’s opinion, the Complainant made a prima facie case. In particular, it presented screenshots from the website linked to the disputed domain name showing the advertisement of “NOVOTEL – Mini Hotel” with unofficial online booking services and the Complainant’s logo. The Panel also recognizes that the Complainant has neither authorized nor licensed the Respondent to use its mark. The Complainant has also no business relationship with the Respondent – the Respondent is not a reseller or distributor of the goods offered by the Complainant.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
Thus, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
The NOVOTEL mark was registered years before the registration of the disputed domain name. Moreover, the NOVOTEL mark was considered by previous panels to be “well-known” or “famous” (See Accor v. Adam Smith, WIPO Case No. D2016-0015; Accor v. null, WIPO Case No. D2016-1160). In this light, the Panel conduces that the Respondent knew or should have known about the Complainant’s rights while registering the disputed domain name.
The Respondent also used the disputed domain name in bad faith. This is evidenced by the screenshots of the website that the disputed domain name resolved to. The website presented the advertisement of “NOVOTEL – Mini Hotel” with unofficial online booking services and the Complainant’s logo. For these reasons, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website. Currently, the disputed domain name is inactive. However, as it has been found in several previous UDRP cases, the fact that the disputed domain name is inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Moreover, the Panel finds that the Respondent’s failure to answer the Complainant’s cease-and-desist letter can be taken into account in a finding of bad faith. In the absence of a plausible explanation from the Respondent as to how and why its registration and use of the Complainant’s mark is appropriate or necessary, the Panel finds that the Respondent registered and used the disputed domain name to take advantage of the worldwide reputation and goodwill of the Complainant and to somehow turn a profit from it and/or to disrupt the business of the Complainant.
Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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, <novotel38.pw> be transferred to the Complainant.
Date: December 24, 2017