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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR v. VVNW Inc.

Case No. D2005-0026

 

1. The Parties

The Complainant is ACCOR, Direction Juridique Groupe, Evry, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is VVNW Inc., Bellingham, Washington, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <novotelhotels.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2005. On January 7, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 7, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on February 3, 2005, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2005, by E-mail and was received by the Center on February 11, 2005, in hardcopy. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2005.

The Center appointed Peter Burgstaller as the sole panelist in this matter on March 15, 2005. 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.

The Center sent a transmission of case file to the Panel by e-mail on March 15, 2005. The case file was received in hardcopy by the Panel on March 16, 2005.

The language of the administrative proceeding is english.

 

4. Factual Background

The Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts:

The Complainant runs famous hotels under the name NOVOTEL, not only in Europe and Asia, but also in North- and South America, Africa and Australia. NOVOTEL is a well known trademark protected worldwide in particular for hotels and restaurants. There are various trademarks registered by the Complainant comprising of the name NOVOTEL from the year 1968 onwards. The Respondent is not affiliated with the Complainant in any way; the Complainant has not granted any license or otherwise permitted the Respondent to use its trademark.

The Respondent registered the Domain Name in dispute on September 4, 2004, with eNom, Inc.

The Complainant sent a warning letter on July 6, 2004, to the Respondent, requesting to transfer amicably the domain name at issue to the Complainant; the Respondent did not reply.

The Respondent did/does not present an own website under the domain name at issue – it only directs Internet users to other websites: At the beginning to “www.campus democrats.org”, after the warning letter to “www.speedydomains.com” and now to “www.psem.com”.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name <novotelhotels.com> is at least confusingly similar to the various trademarks owned by the Complainant which are all containing the mark NOVOTEL, because the mere adjunction of the generic term “hotel” is not a distinguishing feature (see e.g. ACCOR v. Tigertail Partners, WIPO Case No D2002-0625; ACCOR SA v. AURUM Hotelbetriebsges mbH, WIPO Case No D2003-0547).

The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has not authorized the Respondent, granted any license or otherwise permitted the Respondent to use its trademarks for any domain name incorporated the registered trademarks. The Respondent has moreover no prior right or legitimate interests in the domain name at issue.

The domain name in dispute was registered and is being used in bad faith by the Respondent. It is inconceivable that the Respondent would not be aware of the trademarks when registering the disputed domain; adding the generic term “hotels” even heightened the confusion of internet users. Although the domain name at issue has pointed and points to other websites, this does not change the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Before scrutinizing the facts, it is worth noting, that (without claiming completeness) the Complainant already filed several UDRP cases involving its trademark NOVOTEL; e.g. ACCOR v. PC Communication Ltd, Pierre Jean, WIPO Case No. D2000-1580; ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625; ACCOR v. Aurum Hotelbetriebsges mbH, WIPO Case No. D2003-0547.

To make out a successful Complaint, it is the Complainant’s burden to prove under paragraph 4(a) of the Policy that

(i) the domain name at issue is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant must prove that each of these three elements is present, even though the Respondent did not reply.

A. Identical or Confusingly Similar

The Complainant has registered numerous trademarks worldwide containing the mark NOVOTEL. The mere adjunction of the term “hotel” is not sufficient to avoid confusion between the domain name at issue and the Complainant’s trademark. The confusion is only heightened by adding the generic word “hotel” by the Respondent, because the term is descriptive of the goods or services marketed by the Complainant in relation to the trademark (see e.g. Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No D2002-0445; ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625; ACCOR v. Aurum Hotelbetriebsges mbH, WIPO Case No. D2003-0547).

In this instance, the addition of the term “hotel” tends to compound the confusion.

Regarding the top level domain “.com” this Panel follows the principle which applies to UDRP cases, that the addition of a gTLD does not affect the confusing similarity or identity between the domain name and the trademark.

The Panel therefore finds that the Complainant fulfills paragraph 4(a)(i) of the policy.

B. Rights or Legitimate Interests

As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. The Panel, therefore, follows the Complainant’s contentions that the Respondent is not in any way related to the Complainant’s business; the Respondent is not one of the Complainant’s agents and does not carry out any activity for, or has any business with it; moreover, it does not appear that the Respondent has any other connection or affiliation with the Complainant, for example, the Complainant has never given any authorization to the Respondent to make any use of its trademark in order to acquire the domain name at issue.

Furthermore, the Respondent has not been known under this domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy; the Respondent has no rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

“Registered in bad faith”

The Respondent is the Registrant of the domain name in dispute, registered with eNom, Inc. Because of the fame of the trademark NOVOTEL and the Complainant’s worldwide activities especially in hotels and restaurants, it is the Panels conviction, that when registering the domain name at issue, the Respondent knew of the existence of the Complainant’s trademarks.

Moreover the Panel believes that the domain name was registered in bad faith, because the domain name is composed of the Complainant’s trademark to which is added the generic term “hotel”, which evokes precisely the services/goods offered by the Complainant and associated with the mark. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would register the domain name at issue.

These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by the Respondent.

“Being used in bad faith”

The Respondent does not present its own website under the domain name in dispute - it directed/directs to other websites; the domain name in dispute was and is not actively used in the sense of “presenting an own website”.

This Panel, however, follows in this respect the arguments clearly pointed out in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003):

The relevant issue is not a “positive action in bad faith” in relation to the domain name at issue, but “acting in bad faith.” The distinction between these two cases is important, because “being used in bad faith” is not limited to positive actions – inaction is within the concept: In certain circumstances, therefore, it is possible that inactivity by the Respondent may amount to the domain name being used in bad faith. This understanding of paragraph 4(a)(iii) of the Policy is also supported by the actual provisions of the Policy – only paragraph 4(b)(iv) involves a positive action – and other Panel decisions (see e.g. Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584).

The circumstances identified in paragraphs 4(b)(i) to (iii) of the Policy involve also a passive holding/or inaction of the domain name registration, even though these provisions require additional facts. It must be recalled that the circumstances listed under paragraphs 4(b)(i) to (iv) of the Policy are “without limitation” – that is, paragraph 4(b) also expressly recognizes other circumstances giving evidence of bad faith.

Given the widespread use and notoriety of the trademark NOVOTEL and taking into account that the Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name (it even failed to submit a response), and that the Complainant sought an amicable solution of this matter (without reply), and the Respondent added the generic term “hotel” which describes precisely the services/goods for which the Complainant has registered its trademarks, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Taken together these elements becoming compelling enough for a finding of bad faith use. NOVOTEL is a famous mark and the Respondent knew of its existence and of the nature of the goods or services associated with it. The Respondent failed to respond communications from the Complainant and the Center.

The Panel thus finds that the Complainant has proven that the domain name <novotelhotels.com> is being used in bad faith according to paragraph 4(a)(iii) of the Policy by the Respondent.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <novotelhotels.com> be transferred to the Complainant.


Peter Burgstaller
Sole Panelist

Dated: March 23, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2005/d2005-0026.html

 

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