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ACCOR v. Novotell [2004] GENDND 1490 (16 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. Novotell

Case No. D2004-0775

1. The Parties

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

The Respondent is Novotell, Novosibirsk, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <novotell.com> is registered with DomainPeople.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2004. On September 24, 2004, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On September 27, 2004, DomainPeople 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. The Center verified that 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 October 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2004.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 4, 2004. 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 Panel notes that the Center’s couriers were unable to deliver the Complaint to the Respondent in hard copy. The couriers attempted delivery to the address of the Respondent in the WHOIS on October 12, 2004, noting ‘recipient not home’ on the shipment history. They tried again the following day, this time noting ‘Consignee premises closed’. Thereafter, they returned the papers to the Center. However, the Center also sent the Complaint in electronic form by e-mail to the e-mail addresses for the technical, administrative, and billing contact (this was a single email address and was the same as the email address used by the Respondent in correspondence with the Complainant’s agents, as noted below in the Factual Background) together with the email address postmaster@<the contested domain name>. Delivery was not successful to the latter email address but appears to have been received at the former address. The Panel is satisfied that the Center employed suitable methods in accordance with paragraph 2 of the Rules to discharge its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent.

4. Factual Background

The Complainant operates a worldwide chain of hotels under the well-known trademark ‘NOVOTEL’. The Complainant also operates an official website at “www.novotel.com”. The European component of the Complainant’s NOVOTEL network extends to 23 countries with 113 hotels and 18,400 rooms.

The Respondent is an entity based in Novosibirsk, Russian Federation. The nature or legal status of the Respondent is unclear. The Respondent registered the disputed domain name on April 21, 2004.

The Complainant maintains a worldwide intellectual property portfolio containing a number of international trademarks registered under the Madrid System for the International Registration of Marks including:-

“NOVOTEL”, no. 767863, registered on August 21, 2001, with priority from March 9, 2001, in class 38, relating in particular to information transmission and telecommunication services; designating, among other contracting states, the Russian Federation;

“DOLFI NOVOTEL”, (with device) no. 703528, registered on December 1, 1998, with priority from June 8, 1998, in classes 16, 25, 28, 41, 42, relating in particular to catering and lodging, together with other services and goods; designating, among other contracting states, the Russian Federation;

“NOVOTEL”(with device), no. 618550, registered on May 31, 1994, with priority from January 7, 1994, in classes 03, 16, 42; designating, among other contracting states, the Russian Federation;

“NOVOTEL”(with device), no. 564565, registered on November 23, 1990, with priority from May 23, 1990, in classes 16, 20, 21 25, 35, 38, 39, 41, 42; designating, among other contracting states, the Russian Federation;

“NOVOTEL”, no. 542032, registered on July 26, 1989, in class 42; designating, among other contracting states, the Russian Federation;

On May 24, 2004, agents acting for the Complainant wrote to the Respondent by registered mail and e-mail advising of the Complainant’s rights in the NOVOTEL mark and requesting transfer of the disputed domain name. On May 25, 2004, the administrative contact to the disputed domain name replied by email on behalf of the Respondent stating that the Respondent had not broken the law or trademark rights and that it had registered the domain name according to ICANN regulations. This email also promised a more detailed answer following receipt of legal advice.

On June 15, 2004, having received no further comment from the Respondent’s administrative contact, the Complainant’s agents sent a reminder by email. The Respondent’s administrative contact replied immediately quoting paragraph 4 of the Policy in full. In addition, the Respondent’s administrative contact stated that the Respondent’s business was that of a telecommunications company, having no concern with the business of the Complainant, that the Respondent did not register and was not using the disputed domain name in bad faith and that the domain name was not identical or confusingly similar to any trademark of the Complainant, submitting in particular that it is pronounced differently.

On July 26, 2004, the Complainant’s agents replied to the Respondent’s administrative contact by email requesting legal information relating to the Respondent and renewing the Complainant’s intention to obtain the transfer of the disputed domain name. On July 27, 2004, the Respondent’s administrative contact replied to the effect that it was unclear as to the nature of the legal information required and requesting further details. The Complainant’s agents do not appear to have replied to the Respondent’s administrative contact’s final email.

Following the correspondence between the parties, the Complainant conducted searches on the Google Internet search engine and the Russian Yellow Pages (in the latter case both generally and covering the Novosibirsk region) seeking any entries or information regarding the Respondent. The searches did not reveal any company named Novotell operating in the telecommunications field in Novosibirsk.

As at the date of this decision, the website to which the disputed domain name is linked shows a page which bears the legend “Domain Registered / This domain has been registered. / Under Construction / Please check back again soon...”

5. Parties’ Contentions

A. Complainant

The disputed domain name entirely reproduces the Complainant’s NOVOTEL trademarks with the mere addition of the letter “l” which makes no difference to the Complainant’s trademark whether in pronunciation or otherwise.

The Respondent has no prior rights or legitimate interest in the domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said marks. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark.

The Respondent has never used the term “NOVOTEL” or “NOVOTELL” in any way before or after the Complainant developed its hotel-chain and, furthermore, it failed to provide any evidence of the existence of a company named Novotell in the Russian Federation. The Complainant’s investigations did not disclose such a company and it submits that the Respondent is absolutely not known under the name NOVOTELL or any similar term.

As NOVOTEL is famous throughout the world and in particular in the United States, any third party attempt to use the name is made in bad faith. When the Respondent registered the disputed domain name, on April 21, 2004, the Complainant and its trademarks had already been in existence for years.

The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. There is no active website linked to the disputed domain name, which demonstrates that the Respondent is merely preventing the Complainant from registering the disputed domain name.

The Complainant produces an Affidavit (in French) apparently showing the process by which it obtained a screenshot of the website associated with the disputed domain name. The screenshot shows a page which bears the legend “Domain Registered / This domain has been registered. / Under Construction / Please check back again soon...”

The Respondent knew or must have known of the NOVOTEL Chain, at the time it registered the disputed domain name and all the more so because ACCOR runs three Novotel Hotels in the Russian Federation.

The fact that there is no active website linked to the disputed domain name is another element to show that the Respondent does not use the disputed domain name in good faith (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000; Annex 11). Bad faith can also result from inaction in relation to the disputed domain name, in certain circumstances.

NOVOTEL is a famous mark, which has a higher level of protection in intellectual property agreements (article 16(2) and (3) of the TRIPS Agreement). Any actual or contemplated use of the disputed domain name by the Respondent would be illegitimate. NOVOTEL is a very famous hotel-chain in numerous countries, including the Russian Federation. The registration by the Respondent, not followed by any use, tends to create in the public’s mind the impression that NOVOTEL owns a domain name without having constructed the website related to it, which would be quite unprofessional. The registration of the disputed domain name tarnishes the reputation of the mark, and therefore the Complainant.

The disputed domain name was registered in bad faith, if only because the disputed domain name is composed of the Complainant’s trademark with the letter “l” doubled. As such, it constitutes a clear case of typo squatting, as held by Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214. It is inconceivable that the Respondent has chosen to be so closed [sic] to the previous and famous invented word NOVOTEL in the disputed domain name by accident. Furthermore, no intention to use the mark has been expressed.

B. Respondent

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

6. Discussion and Findings

General

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

(i) The 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 domain name; and

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

A. Identical or Confusingly Similar

The disputed domain name is not identical with the Complainant’s mark “NOVOTEL”; rather it incorporates the mark in its entirety. Discounting the ‘.com’ top level domain on the grounds that this is wholly generic, the Panel is left with the difference of an additional “l” in the disputed domain name. The mark of the Complainant consists of a ‘fanciful’, invented or coined term. The additional “l” in the disputed domain name does not create a generic or descriptive term that would allow it to be clearly distinguished from the Complainant’s mark.

In the view of the Panel, the disputed domain name and the Complainant’s mark are almost indistinguishable, particularly because the additional letter at the end of the disputed domain name is the same as the final letter of the mark. Whether considered phonetically or visually, the two are extremely similar. Is such similarity confusing? In the view of the Panel, based on the objective likelihood of confusion, it is. The Panel believes that the disputed domain name is likely to attract customers of the Complainant seeking to access the Complainant’s official website who misspell or err in typing the domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant asserts that the Respondent is not affiliated with the Complainant in any way and is neither authorized to use and register the Complainant’s trademarks, or to seek the registration of any domain name incorporating such marks. The Complainant also asserts that the Respondent has not used the term “NOVOTELL” in any way and failed to provide any evidence of the existence of a company with this name in the Russian Federation. In support of this assertion, the Complainant produces a copy of its efforts to search for this term and for the Respondent on the Internet. These searches produced a negative result. The Complainant also submits that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name in that there is no active website linked to it, this point being evidenced by the Complainant’s Affidavit in French and associated screenshots.

It should be noted that the Panel has not relied upon the Complainant’s Affidavit in considering the use of the website linked to the disputed domain name. The Affidavit is in French. The Panel is capable of understanding the meaning and import of the Affidavit. However, the language of these proceedings is English and it would be unfair to the Respondent to bring the terms of a document in another language into consideration. Under Rule 11(b) of the Policy the Panel has discretion to order the translation of the Affidavit into English. The Panel has decided not to do so on the basis that this would delay the conclusion of the administrative proceeding unnecessarily. In any event, it is clear to the Panel without considering the terms of the Affidavit itself that, as at the date of this decision, the website to which the disputed domain name points is identical to the screenshot attached to the Complainant’s Affidavit and matches the Complainant’s general submission that the site is inactive.

There is no response from the Respondent to the Complainant’s assertions. However, there is an indicative response in the email exchange between the parties produced by the Complainant. In this, the Respondent’s administrative contact stated that the Respondent’s business was that of a telecommunications company, having no concern with the business of the Complainant. The correspondence is, however, somewhat inconclusive, as the Complainant’s response to the Respondent’s explanation was to request the Respondent to provide ‘legal information relating to the Respondent’. When the Respondent’s administrative contact sought further details as to what legal information was being requested the Complainant’s agents appear not to have replied.

It would have been helpful to the Panel if the Complainant’s agents had pursued the issue of the Respondent’s legal status in the correspondence before proceeding with the present Complaint. Nevertheless, the Complainant’s agents are not obliged to clarify the position with the Respondent however helpful it might have been to the Panel; the Respondent must answer for itself and it has failed to do so.

The Panel is of the view that the Complainant has raised a prima facie case under this head of the Policy by way of its submissions and the copy Internet searches which it has produced. Given the Respondent’s stated explanation in the correspondence, the Panel would have expected the Respondent to attempt to make a robust showing of its rights and legitimate interests in response to the Complaint. Depending upon the evidence, such a showing might possibly have satisfied the requirements of either paragraph 4(c)(i) or 4(c)(ii) of the Policy. In the view of the Panel, the mere assertion of the Respondent in correspondence between the parties, without any evidence, is not enough to counter the Complainant’s submissions.

Furthermore, in terms of paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences from the Respondent’s failure to respond to the administrative proceeding as it considers appropriate. The Panel draws the inference that had there been any merit in the Respondent’s assertions as contained in the parties’ correspondence it would have submitted a response to the present administrative proceeding complete with evidence of its rights and legitimate interests in the disputed domain name and in particular, evidence of its name, legal status and business activities.

Consequently, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant asserts that the Respondent knew or must have known of the NOVOTEL Chain at the time it registered the disputed domain name on the basis that the Complainant operates three Novotel Hotels in the Russian Federation. The Complainant’s evidence shows that two of these are in Moscow. The location of the third is St. Petersburg, but the extract provided by the Complainant states that this hotel does not open until 2005. The Complainant goes on to submit that NOVOTEL is a very famous hotel-chain in numerous countries, including the Russian Federation, that it is a famous mark, referring to article 16(2) and (3) of the TRIPS Agreement, and that any actual or contemplated use of the disputed domain name by the Respondent would therefore be illegitimate.

Very scant evidence is provided by the Complainant as to its activities in the Russian Federation or as to how its trademarks are well-known throughout that country on the basis of two operating hotels and one in development. The Panel, somewhat reluctantly, is just persuaded to accept the Complainant’s assertions, in light of the fact that it has proved that it has a very substantial business worldwide, that it does indeed carry on business in the Russian Federation and that it holds several international trademarks having effect in that country all of which pre-date the registration of the disputed domain name by a reasonable length of time, in one case dating as far back as 1989. There is no answer or contradiction provided by the Respondent to the Complainant’s points. Having said this, in the view of the Panel, the fact that the Respondent might have had notice of the Complainant’s trademarks prior to his registration of the disputed domain name does not demonstrate registration and use in bad faith on its own. Something more is required, for example, evidence that the Respondent had the Complainant in mind or was specifically targeting the Complainant in registering the disputed domain name.

The Complainant goes on to cite Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as authority for its proposition that bad faith results from the Respondent’s inaction and that the Respondent’s failure to use the disputed domain name for a website does not imply good faith registration and use.

It is important to bear in mind that it is not necessary for any domain name holder to point a domain name to an active website. An inactive website does not, on its own, offend against the Policy. However, in some cases the whole circumstances including such ‘passive holding’ can amount to bad faith registration and use. In Telstra Case, the Panelist identified five relevant issues, summarized as (i) strength of trademark’s reputation; (ii) no evidence by Respondent of actual or contemplated good faith use; (iii) active steps by Respondent to conceal its identity; (iv) active provision of false contact details by Respondent; and (v) lack of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.

The Panel considers that there are sufficient elements in the Complainant’s evidence which point to bad faith registration and use. Each of these taken on their own might not have been sufficient but the Panel is satisfied that the totality of the evidence does justify such a finding. It is worth noting each of these elements would have been capable of answer and opposition by the Respondent and that its failure to respond is particularly significant. The issues are:

(i) the strength of the Complainant’s trademarks - it is clear that the Complainant is well-known worldwide and has a significant portfolio of international trademarks including a mark covering certain telecommunications services (the same class of services which the Respondent claims to provide in the email correspondence between the parties). The Complainant’s submissions on the strength of its trademarks, in particular within the Russian Federation, are entirely uncontested;

(ii) the Respondent’s failure to provide evidence of actual or contemplated good faith use. As noted earlier, while the Respondent may have hinted at putative good faith use in the correspondence between the parties, no weight can be given to a simple assertion on its own. In any event, the explanation given by the Respondent in the correspondence is extremely unpersuasive and the Panel finds it most unlikely that a company in the telecommunications business would fail to develop any website during a period of more than six months after registration of its domain name while nevertheless carrying on business;

(iii) the fact that the disputed domain name is extremely close and strikingly similar to the Complainant’s mark such that it may be regarded as ‘typosquatting’ as contended for by the Complainant - again, the Respondent might have rebutted this point by offering a detailed explanation as to its choice of name but has chosen not to do so; and

(iv) given that the Complainant’s trademarks are well-known worldwide and have effect in many countries, and given that one of the Complainant’s trademarks covers similar services to those which the Respondent claimed to provide, it is difficult to conceive of a use of the disputed domain name by the Respondent that would not cause consumer confusion or alternatively infringe the Complainant’s trademark. The Respondent’s failure to offer any explanation or reply as to its actual or proposed use of the disputed domain name is again a significant factor in this element.

In light of the above, the Panel finds that Complainant has proved that the disputed domain name was registered and has been used in bad faith.

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 <novotell.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist

Dated: November 16, 2004