WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Whois Agent, Whois Privacy Protection Service, Inc., ICS Inc

Case No. D2015-2291

1. The Parties

The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America; ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <novotel-cairo-6th-of-october.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent ICS Inc 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 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2016.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on January 22, 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

Accor operates more than 3,700 hotels in 92 countries worldwide and over 450,000 rooms, from economy to upscale. The group consists of notable hotel chains such as Pullman, Novotel, Grand Mercure and Ibis. Overall, Accor is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services.

Novotel is a four star international midscale brand for business and leisure travelers, with hotels located in the heart of major international cities, business districts and tourist destinations. Recent openings include locations in Phuket (Thailand), Moscow (Russian Federation), Lodz (Poland), Danang (Viet Nam), Goa (India), Panama (Panama), Dubai (United Arab Emirates) and Salvador (Brazil).

Novotel also operates a four star hotel known as “Novotel Cairo 6th of October” located in Egypt.

The Complainant owns numerous trademarks, including:

- International trademark NOVOTEL No. 785645 created and registered on June 25, 2002 designating Egypt, covering services in class 43 and renewed;

- International trademark NOVOTEL No. 542032 created and registered on July 26, 1989 designating Egypt, covering services in classes 42 and renewed.

The Complainant also operates inter alia the domain name <novotel.com>, created and registered on April 10, 1997 and last updated on December 8, 2015.

The disputed domain name is <novotel-cairo-6th-of-october.com>, registered on October 24, 2011 and last updated on September 27, 2014.

The disputed domain name resolves to a parking page displaying sponsored links reproducing the Complainant’s trademark NOVOTEL and related to the Complainant’s field of activity. Also, the domain name is offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that all three requirements stated in paragraph 4(a) of the Policy are met in the present case:

(1) The disputed domain name is identical or confusingly similar to the Complainant’s trademark

The Complainant contends that Accor and its trademark NOVOTEL enjoy a worldwide reputation. The trademark NOVOTEL has been considered “well-known” or “famous” by WIPO UDRP panels (citing Accor v. Shinwute K., WIPO Case No. D2013-1729; Accor v. Value-Domain, Inc., WIPO Case No. D2012-1342; Accor v. ji kai jun, WIPO Case No. D2012-1409).

The disputed domain name incorporates the Complainant’s mark in its entirety. This establishes confusing similarity between the disputed domain name and the Complainant’s mark.

The addition of the geographical terms “cairo” and “6th of october” does not diminish any likelihood of confusion. In fact, it even increases the level of confusion since it indicates to Internet users that the domain name would direct them to the Complainant’s website of its hotel by the name “Novotel Cairo 6th of October”.

The hyphens added equally do not suffice to prevent the likelihood of confusion.

The generic Top-Level Domain (“gTLD”) “.com” may furthermore not be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The registration of the trademark NOVOTEL preceded the registration of the disputed domain name.

The Complainant has not authorized or licensed the use of the trademark NOVOTEL by the Respondent. The Respondent is, furthermore, in no way affiliated with the Complainant and not commonly known by the name “Novotel”.

The Complainant further submits that the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is so similar to the Complainant’s trademark that the Respondent cannot reasonably be considered to intend developing legitimate activity through the disputed domain name. Additionally, the disputed domain name resolves to a “parking page” displaying sponsored links related to the Complainant’s field of activity.

The Respondent does not make legitimate noncommercial or fair use of the disputed domain name, since the website at the disputed domain name displays pay-per-click links which are likely to create revenue. The Respondent’s intention to commercially benefit can also be inferred from the fact that the disputed domain name is offered for sale.

The Respondent moreover registered the disputed domain name with a privacy shield service to hide “his identity and prevent Complainant from contacting him”, which also indicates that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Finally, the entity ICS Inc as being part of the Respondent has been considered to be a “serial cybersquatter” in previous WIPO panel decisions, which renders a potential legitimate interest even more unlikely.

(3) The disputed domain name was registered and is being used in bad faith

The Complainant submits that knowledge of the Complainant’s rights at the time registration establishes bad faith registration. As the trademark NOVOTEL is well-known throughout the world, it is “implausible” that the Respondent was not aware of the Complainant’s rights upon registry of the disputed domain name. Furthermore, the Respondent reproduced the Complainant’s trademark in its entirety and made reference to the Complainant’s hotel “Novotel Cairo 6th of October”, also indicating prior knowledge.

The facts that ICS Inc has been identified as a serial cybersquatter by WIPO UDRP panels and that it registered the disputed domain name through a privacy shield service are additional signs of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Before dealing with the requirements of paragraph 4(a) of the Policy, the Panel must consider the impact of the Complainant having identified a Respondent consisting of two entities.

According to paragraph 3(b)(v) of the Rules, the Complaint shall “Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a)”.

If the “wrong” Respondent is identified in the heading, it does not necessarily follow that the proceedings should be rejected as invalid (see RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987 and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894). In fact, proceedings are brought in respect of the domain name; the identification of the registrant serves to ensure a proper notification of the person or persons who have an interest in the name Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886).

Prima facie the entity that is recorded in the registrar’s register as revealed by a WhoIs search is the respondent for the purposes of paragraph 3(b)(v) of the Rules. (RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987 and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), supra. A requirement to absolutely identify the “true” owner prior to filing of complaint would block the recourse under the Policy of complainants which do not have knowledge of such true identity. Since this cannot be what was intended by the framers of the Policy, it suffices to identify the entity recorded on the WhoIs database, if the complainant has no knowledge of the true identity of a respondent.

The Complaint here however identifies a respondent consisting of two entities. The entity Whois Agent, Whois Privacy Protection Service, Inc. was the registrant identified in the search conducted by the Complainant on December 11, 2015 (attached as annex 1 to the Complaint). The entity ICS Inc is the registrant that can currently be found when conducting a WhoIs search. This means that either entity could be considered to be a proper “Respondent” under paragraph 3(b)(v) the Rules. If ICS Inc (the registrar-confirmed registrant of the disputed domain name) had not been included in the original Complaint, it could have been necessary to grant the Complainant an opportunity to amend the Complaint and include the “underlying” entity before proceeding.

According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.

In the following, the Panel will discuss in consecutive order if each of these requirements are met here.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark NOVOTEL. As referenced by the Complainant, UDRP panels have considered NOVOTEL to be well known or even famous (Accor v. Shinwute K.,supra; Accor v. Value-Domain, Inc.,supra; Accor v. ji kai jun, supra).

The issue of whether a domain name is confusingly similar to a mark is determined through a direct comparison of the mark and the domain name (Group Kaitu, LLC, Darkside Productions, Inc. v. NetDirect, WIPO Case No. D2011-0220). When a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). Numerous UDRP panels have found that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong, paragraph 4(a)(i) of the Policy (e.g., Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500). As such, a domain name that consists of a trademark and a geographic term is still confusing (L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1640; L’Oréal v. Liao Quanyong, WIPO Case No. D2007-1552; Accor v. Serdar Ceylan, WIPO Case No. D2011-2231 and LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505). Moreover, the additions of gTLD suffixes (e.g., “com”) or hyphens are irrelevant for the assessment of confusing similarity (Realm Entertainment Limited v. Enes Usta, WIPO Case No. D2015-1253; Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572).

NOVOTEL is a highly distinctive mark, which the disputed domain name reproduces in its entirety. Its other elements are, apart from the irrelevant “.com” suffix and the hyphens, the terms “cairo” and “6th of october”. Both “cairo” and “6th of october” refer to places in Egypt: Cairo is the country’s capital and 6th of October City is a satellite town in its urban area. These elements of the disputed domain name hence qualify as geographic terms, which solely are of descriptive character. It is thus concluded that there is confusing similarity between the Complainant’s trademark and the disputed domain name within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, which shifts the burden of production on the Respondent (Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) info@fashionid.com, WIPO Case No. D2006-0478).

The Respondent did not submit any evidence of rights or legitimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized, licensed or otherwise allowed to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The facts that the Respondent used the disputed domain name to display pay-per-click links and that it is for sale, speak against a fair use of the disputed domain name by the Respondent.

Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.

The disputed domain name was registered in bad faith.

Prior knowledge of the Complainant’s trademark rights indicates bad faith registration of the disputed domain name (TRS, Quality, Inc v. Privacy Protect, WIPO Case No. D2010-0400). The Panel agrees with the Complainant that it is unlikely that the Respondent was unaware of the Complainant’s rights at registration of the disputed domain name and that the Respondent came up with the disputed domain name without knowledge of the Complainant’s rights and activities. The NOVOTEL brand dates back to 1967 and comprises close to 400 hotels in 60 different countries. One of its hotels is the “Novotel Cairo 6th of October”. The Respondent has chosen precisely the label used to designate the Complainant’s local hotel in the disputed domain name. The Panel is convinced that this is hardly the result of a coincidence and that, given the similarities, the Respondent had knowledge of the Complainant’s trademark rights (see BookIt.com, Inc. v. PrivacyProtect.org / ICS INC., WIPO Case No. D2013-0775).

Registering the disputed domain name through a privacy shield service to hide the identity and contact details may be another indicator of registration in bad faith (see Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729; TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725).

Furthermore, the disputed domain name is also usedin bad faith.

Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found applicable by the Panel, are taken to be evidence of bad faith. One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that the Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Domain parking activities are use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (Classmates Online, Inc. v. Mary Lamb, WIPO Case No. D2009-0715). This is especially the case if the domain name features another’s trademarks in their entirety (see Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266). The Respondent created a domain name utilizing an identical wording as the one used by the Complainant to describe its hotel in 6th of October. That domain name also entirely featured the Complainant’s well-known trademark NOVOTEL. The Respondent’s website displays pay-per-click links, referring to websites active in the Complainant’s field (e.g., “www.hotels.com”, “www.booking.com”, “www.marriott.com”, etc.). These circumstances sufficiently establish that the Respondent attempted to create a likelihood of confusion to attract Internet users to its website in order to commercially gain from their impression, that the website is in some way connected to the Complainant’s business in Cairo.

An undisputed history as a serial cybersquatter is a further indication of bad faith (Yale University v. Domain Holding Corp. AS and Eric Keller, WIPO Case No. D2013-1404). WIPO UDRP panels have considered Respondent ICS Inc to be a “serial cybersquatter” before and there are no circumstances suggesting different behavior in the instant case.

Considering the aforementioned circumstances, the Panel finds that the Complainant has provided sufficient evidence to prove that the disputed domain name was registered and is being used in bad faith as required under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <novotel-cairo-6th-of-october.com>, be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: February 5, 2016