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ACCOR v. Winston Minor [2004] GENDND 487 (8 April 2004)

1. The Parties

The Complainant is ACCOR Société anonyme, Evry, France, represented by Cabinet Ores, Paris, France.

The Respondent is Winston Minor, Vista, California, United States of America, represented by The Tayler Law Firm, P.C., San Diego, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <novotel-inc.com> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on December 18, 2003, (electronic version) and on December 22, 2003, (hard copy). On December 22, 2003, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On December 23, 2003, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response and confirmed that it was the Registrar for the domain name at issue and the Respondent is listed as the registrant of the domain name at issue. Further, the Registrar provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name at issue.

The Center verified that the Complaint satisfied the formal requirements of 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"). The Complainant made the required payment to the Center.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2003. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 18, 2004. The Center received an e-mail from the Respondent on January 5, 2004, in which the Respondent requested the Center's assistance to resolve the matter. On January 12, 2004, the Center informed the parties by e-mail that any settlement negotiations must be carried out between the parties involved. On January 12, 2004, the Center sent a copy of the Respondent's e-mail of January 5, 2004, by e-mail to the Complainant and provided the Complainant with general information about suspension of the proceedings. On January 15, 2004, the Center received an e-mail from the Complainant, in which the Complainant stated that it was not interested in suspending the proceedings.

The Response was filed with the Center on January 16, 2004, (electronic version) and January 23, 2004 (hard copy).

On January 27, 2004, the Center transmitted by e-mail to the Respondent a copy of the Complainant's e-mail of January 15, 2004.

The Center appointed Markus S. Hellgren as the sole panelist in this matter on March 25, 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 paragraph 7 of the Rules.

The language of the proceeding is English.

4. Factual Background

The Complainant has run hotels under the name NOVOTEL since 1967. In France, NOVOTEL has 118 hotels with 14,232 rooms. In Europe (excluding France), the NOVOTEL network extends to 23 countries with 113 hotels and 18,400 rooms. NOVOTEL hotels are also situated in North and South America, Africa, Asia and Australia.

The Complainant is the owner of numerous trademark registrations consisting of or incorporating the mark NOVOTEL, for example:

International Trademark Registration No. 767863 NOVOTEL, registration date August 21, 2001, in International Class 38;

International Trademark Registration No. 618550 NOVOTEL & Device, registration date May 31, 1994, in International Classes 3, 16 and 42;

International Trademark Registration No. 542032 NOVOTEL, registration date July 26, 1989, in International Class 42;

United States Trademark Registration No. 1803936 NOVOTEL, registration date November 9, 1993, in International Class 42;

United States Trademark Registration No. 2013007 NOVOTEL & Device, registration date November 5, 1996, in International Classes 16 and 42.

The domain name at issue was registered on August 11, 2003.

The Complainant is the owner of the domain name <novotel.com>.

On September 4, 2003, the Complainant sent a warning letter via registered mail and e-mail to the Respondent and requested the amicable transfer of the domain name at issue. On September 13, 2003, the Respondent replied to the Complainant by e-mail and stated that he did not know that the domain name at issue existed and that he was a victim of credit card fraud and/or computer fraud. On September 15, 2003, the Complainant replied to the Respondent's e-mail address according to the Whois database and requested Respondent's assistance with transferring the domain name at issue.

On October 22, 2003, the Complainant sent a letter via registered mail and e-mail to the Respondent and requested Respondent's assistance with transferring the domain name at issue. On October 23, 2003, the Respondent sent an e-mail to an e-mail address at <yahoo-inc.com> and a copy to the Complainant and requested the recipient to contact him.

On October 30, 2003, the Respondent sent an e-mail to the Complainant and stated that he was willing to transfer the domain name at issue to the Complainant and that he was unable to resolve this matter with Yahoo. Further, the Respondent requested the Complainant to inform him on how to proceed. The Respondent also stated that he had no access to the e-mail address stated in the Whois database.

On November 6, 2003, the Complainant sent an e-mail to the technical contact of the domain name at issue, according to the Whois database, and copies to the Respondent's e-mail address, as stated in the Whois database, and the Registrar and stated that the Respondent is willing to transfer the domain name at issue. Further, the Complainant enclosed copies of the previous correspondence with the Respondent and requested the technical contact to transfer the domain name at issue to the Complainant.

5. Parties' Contentions

A: Complainant

Identical or Confusingly Similar

The Complainant contends that the domain name at issue is confusingly similar to the trademark and service mark NOVOTEL in which the Complainant has rights due to the fact that the domain name at issue incorporates the mark NOVOTEL followed by the descriptive term "inc". The public is inclined to think that <novotel-inc.com> will lead to a website related to the NOVOTEL chain.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. The Complainant further contends that the Respondent is not affiliated with the Complainant. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, nor 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" in any way before or after the Complainant developed its hotel-chain. And, as NOVOTEL is famous throughout the world and in particular in the United States, any attempt to use the name is made in bad faith. The Complainant further contends that when the Respondent registered the domain name on August 11, 2003, NOVOTEL had already been in existence for years.

The Respondent is not known under the name NOVOTEL, NOVOTEL-INC or any similar term.

Finally, the Respondent is not making any legitimate non-commercial or fair use of the domain name. There is no active website linked to the domain name, which demonstrates that the domain name owner prevents the Complainant from registering said domain name.

Registration and Use in Bad Faith

The Complainant contends that the domain name at issue was registered and is being used in bad faith for the following reasons:

The Respondent knew or must have known the NOVOTEL chain, at the time it registered the domain name.

The Respondent alleged that it was a victim of computer fraud and that it did not want to register the domain name, but did not cooperate in order to transfer, amicably, the domain name, although it was the administrative contact.

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 said domain name in good faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No D2000-0003. Bad faith can also result from inaction in relation to the domain name, in certain circumstances.

Besides, it shall be taken into account that 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).

NOVOTEL is a very famous hotel-chain in numerous countries, including the United States. 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 domain name was, in fact, designed to tarnish the reputation of the mark, and therefore the Complainant.

The domain name was registered in bad faith since it is composed of the Complainant's trademark to which is added the generic term "inc", which indicates that the Respondent is associated with the Complainant's trademark NOVOTEL. It is not likely that the Respondent has chosen to include the invented word NOVOTEL in the domain name by accident. Any actual or contemplated use of the domain name by the Respondent would be illegitimate, taking into account the fact that the mark NOVOTEL is famous. Furthermore, no intention to use the mark has been expressed.

B. Respondent

Jurisdictional Challenge

The Respondent contends that neither WIPO nor this Administrative Panel have jurisdiction over the Respondent. The Respondent contends that he did not register the domain name at issue. The Respondent was the victim of credit card fraud, and an individual unknown to the Respondent apparently registered the domain name using the Respondent's identity. Accordingly, the Respondent did not submit to the jurisdiction of WIPO or to this Administrative Panel.

Identical or Confusingly Similar

The Respondent takes no position on this issue.

Rights or Legitimate Interests

The Respondent states that he has no interest in the domain name at issue.

Registration and Use in Bad Faith

The Respondent contends that he has not acted in bad faith for the following reasons:

The Respondent attempted to resolve this situation with the Complainant's counsel before this action was filed. Instead of working with the Respondent, however, the Complainant filed this action, wasting the time and money of both this Administrative Panel and of the Respondent.

The Respondent contends that he did not establish the domain name at issue. Moreover, as reflected in the documentation contained in Annex 6 to the Complaint in this case, in an e-mail dated October 30, 2003, the Respondent explained that he had been unable to resolve this matter with Yahoo and requested Complainant's further assistance in doing so. Annex 6 to the Complaint reflects that Complainant did not respond to that e-mail.

Instead, on November 6, 2003, the Complainant sent an e-mail to YahooDomains Tech Contact but did not send the Respondent a copy of that email at the email address that he had given to the Complainant. The Complainant then filed this WIPO action without making any further effort to resolve this matter amicably.

As a consequence of Complainant's actions, Respondent has been forced to engage counsel to represent him in this matter as Respondent is not familiar with these types of proceedings.

Hence, if any party has acted in bad faith, it is Complainant. Respondent has incurred approximately USD 1,000 in attorney fees and expenses as a result of Complainant's refusal to settle this matter amicably. The Respondent believes that justice requires that he be made whole. Respondent respectfully suggests that this Administrative Panel encourages Complainant to settle this matter fairly before ruling on the merits of this action.

6. Discussion and Findings

A. Jurisdictional Challenge

The Respondent contends that neither WIPO nor this Administrative Panel have jurisdiction over the Respondent due to the fact that he did not register the domain name at issue. The Respondent contends that he was the victim of credit card fraud, and that an individual unknown to the Respondent apparently registered the domain name using the Respondent's identity.

Accordingly, the Panel must first determine whether or not it has jurisdiction over the Respondent.

The Respondent has in this case referred to documentation provided by the Complainant as Annex 6 to the Complaint as evidence that he has not registered the domain name at issue and that he has been the victim of credit card fraud. This documentation consists of copies of correspondence by registered mail and e-mail between the Complainant and the Respondent. Further, the documentation also consists of a copy of an e-mail sent by the Respondent to an e-mail address at <yahoo-inc.com>. The Respondent's response does not contain any further documentation in support of his contentions. The Panel deems that the Respondent has failed to produce sufficient evidence in order to show that he has not registered the domain name at issue or that he has been the victim of credit card fraud. Therefore, the Panel does not make a determination regarding whether or not such circumstances would imply that WIPO and this Panel do not have jurisdiction over the Respondent.

The Registrar has confirmed that the Respondent is listed as the registrant of the domain name at issue and the Panel has no reason to question this confirmation. The registration agreement, pursuant to which the domain name at issue was registered, incorporates the Policy. A copy of the registration agreement applicable to the domain name at issue was provided by the Complainant as Annex 2 to the Complaint.

Paragraph 4(a) of the Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph.

The Panel finds that the Complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.

B. Settlement negotiations

The Respondent suggests that the Panel encourages Complainant to settle this matter before ruling on the merits of this action. However, a Panel can not assist the parties in settlement negotiations; it is not within the scope of the Policy.

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative

proceeding.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) that Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

C. Identical or Confusingly Similar

The Complainant contends that the domain name at issue is confusingly similar to the trademark and service mark NOVOTEL in which the Complainant has rights.

The Complainant has shown that it is the owner of numerous trademark and service mark registrations consisting of or incorporating the mark NOVOTEL. The domain name at issue consists of the mark NOVOTEL followed by the word "inc", which is an established abbreviation for the word "incorporated," and the gTLD ".com".

First of all, the gTLD ".com" is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.

Further, the fact that a domain name wholly includes a Complainant's mark is sufficient to establish confusing similarity, despite the addition of generic words, such as e.g. "inc". This has been held by numerous prior panels. See Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, and EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

Accordingly, the Panel finds that the domain name at issue is confusingly similar to the trademark and service mark NOVOTEL in which the Complainant has rights.

D. Rights or Legitimate Interests

The Complainant contends that Respondent has no rights or legitimate interests in the domain name. The Complainant contends that the Respondent is not affiliated with the Complainant and that the Complainant has not authorized the Respondent to register any domain name incorporating the Complainant's mark NOVOTEL. The Complainant further contends that it has not granted any license or otherwise permitted the Respondent to use its trademark and that the Respondent is not known under the name NOVOTEL, NOVOTEL-INC or any similar term. Finally, the Complainant contends that Respondent is not making any legitimate non-commercial or fair use of the domain name.

The Respondent does not contest the contentions of the Complainant but states that he has no interest in the domain name at issue. Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name. In addition to these criterions, other factors alone or in combination can support a finding of bad faith.

The Respondent contends that he has not acted in bad faith. The Respondent contends that he did not register the domain name at issue and that he was the victim of credit card fraud, and an individual unknown to the Respondent apparently registered the domain name using the Respondent's identity. However, as stated above under paragraph 6 A., the Respondent has failed to produce sufficient evidence in order to show that he did not register the domain name and that he has been a victim of credit card fraud. The Respondent is listed as the registrant of the domain name and there is no information available to this Panel that the domain name has been assigned to the Respondent. Therefore, the Panel must assume that it was the Respondent that registered the domain name at issue.

In the light of the Complainant's numerous trademark registrations for, and its wide reputation in, the mark NOVOTEL, it is most likely that the Respondent was aware of the Complainant's trademark and service mark NOVOTEL when registering the domain name at issue. It is most unlikely that the Respondent just happened to unintentionally select the invented word and widely known mark NOVOTEL when selecting the domain name at issue. The knowledge of the Complainant's mark at the time of registration of the domain name suggests bad faith. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. Accordingly, the Panel concludes that the domain name at issue was registered in bad faith.

As to whether the domain name is used in bad faith, it appears from the information available to this Panel that the domain name at issue does not resolve to a web site. The fact that a domain name does not resolve to a web site can in certain circumstances be evidence of use in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that "The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith."

In the Respondent's e-mail to the Complainant of September 13, 2003, he stated that he had received the Complainant's request to amicably transfer the domain name and that he considered that the domain name belonged to the Complainant. The Respondent contends that he has not been able to transfer the domain name to the Complainant due to the fact that he was unable to resolve this matter with Yahoo. In this respect, the Respondent refers to his e-mail to the Complainant of October 30, 2003, in which he explained that he was unable to resolve the matter. However, the Respondent has not provided the Panel with an explanation as to why it was not possible to resolve this matter with Yahoo. The Panel deems that the Respondent has failed to produce sufficient evidence showing that he was unable to resolve this matter with Yahoo.

Further, instead of filing a response and simply agreeing to the transfer of the domain name, the Respondent chose to contest the Complaint and thereby the Complainant's request for transferring the domain name at issue, which contradicts the Respondent's statement that he is willing to transfer the domain name. The Respondent has provided no evidence of any actual or contemplated good faith use by him of the domain name at issue.

In light of the above particular circumstances and that the Complainant's trademark and service mark NOVOTEL is widely known, as evidenced by its use in France and other countries, the Panel concludes that the domain name is being used in bad faith.

Accordingly, the Panel finds that the Complainant has entirely satisfied its burden under paragraph 4(a)(iii) of the Policy.

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, <novotel-inc.com>, be transferred to the Complainant.