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ACCOR v. GBT [2005] GENDND 1807 (6 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. GBT

Case No. D2005-0809

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, Paris, France.

The Respondent is GBT, St. Helier, Jersey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <novotelgarden.com> and <novotelgardenplaza.com> are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2005, and the acknowledgement of receipt of the Complaint sent to Complainant by email on August 1, 2005. On July 29, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On July 29, 2005, 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 for the administrative and technical contact. On August 19, 2005, 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 August 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2005.

The Center appointed Dina Founes as the sole panelist in this matter on September 22, 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.

In accordance with paragraph 11 of the Rules, the language of proceeding shall be English.

4. Factual Background

Complainant is one of the largest European and international leading groups in hotel services, travel, tourism and corporate services.

Within the business hotel sector, Complainant owns and operates a worldwide chain of hotels in 90 countries under different well-known brands such as SOFITEL, NOVOTEL, MERCURE, IBIS, etc...

The “Novotel” chain of hotels (401 hotels) is present in 60 countries around the world among which 30 Novotel hotels are located in the United Kingdom.

Complainant is the worldwide and legitimate owner of the trademark and service mark NOVOTEL, and has submitted, in support of its Complaint, copies of the following International trademark registrations:

- NOVOTEL, International Trademark n° 352918, filed on November 25, 1968, renewed and covering products and services in classes 11, 16, 19, 20, 28, 29, 42 .

- NOVOTEL, International Trademark n°542032, filed on July 26, 1989, renewed and covering services in class 42.

- NOVOTEL, International Trademark n° 564565, filed on November 23, 1990, renewed and covering products and services in classes 16, 20, 21, 25, 35, 38, 39, 41, 42.

- NOVOTEL, International Trademark n°618550, filed on May 31, 1994, renewed, covering products and services in classes 3, 16, 42.

- NOVOTEL, International Trademark n°767863, filed on August 21, 2001, and covering products and services in class 38.

- NOVOTEL, International Trademark n°785645, filed on June 25, 2002, and covering products and services in class 43.

- NOVOTEL, Community Trademark n°003544137, filed on October 30, 2003, and covering products and services in classes 38, 41, 43.

The word “Novotel” is also used as a trade name and is protected as such.

In order to facilitate online booking by interested Internet users of its NOVOTEL hotels worldwide, Complainant operates a website under the domain name <novotel.com> which was registered by Complainant on April 10, 1997.

Complainant recently uncovered the registration by Respondent of the disputed Domain Names <novotelgarden.com> and <novotelgardenplaza.com>, and conducted accordingly on March 30, 2005, a WHOIS database search which revealed that EFT (Everlasting Friendship Trust) was the registrant of the two Domain Names at issue, and that both Domain Names were registered on November 17, 2004.

Accordingly, Complainant sent two successive cease and desist letters to Everlasting Friendship Trust dated of April 1, 2005 and May 24, 2005 requesting the transfer of the disputed Domain Names to Complainant.

Everlasting Friendship Trust failed to reply to these letters.

A new WHOIS database search was conducted by Complainant on July 27, 2005, which revealed that the registrant’s name of the disputed Domain Names had changed to GBT which is the Respondent in the present UDRP proceeding, and that the new registrant’s address and contact details remained identical to those of the first registrant, Everlasting Friendship Trust, except for the name of the administrative and technical contacts, which became Investment Trust, global banking & domains@1x1.net.

In this regard, Complainant indicates that a first UDRP proceeding against Everlasting Friendship Trust was initiated by Complainant for the undue registration on November 24, 2004, of the domain name <novotelnewyork.com>, and that a UDRP decision under reference WIPO Case No. D2005-0288 was rendered in this respect on May 23, 2005, ordering the transfer of the disputed domain name to Complainant.

Failing to obtain the amicable transfer of the Domain Names <novotelgarden.com> and <novotelgardenplaza.com> from Respondent, and considering Everlasting Friendship Trust’s previous registration of the domain name <novotelnewyork.com>, and the recent change of registrant’s trade name from Everlasting Friendship Trust to GBT, which occurred after the sending of the two cease and desist letters by Complainant as illustrated in Exhibit (4) of the Complaint, Complainant decided to submit the present Complaint to the Center.

5. Parties’ Contentions

A. Complainant

Complainant asserts that:

a) The disputed Domain Names are confusingly similar to the numerous trademarks and service marks registered by Complainant on the grounds that:

- The adjunction of the terms “garden” or “gardenplaza” to the term “novotel” in the disputed Domain Names is descriptive of the characteristics of many of the Group Accor hotels, and would only lead to confusion in the minds of consumers who would consider that such Domain Names are referring to the official website of Novotel.

- The mark NOVOTEL constitutes a famous trademark within the hotels and restaurants business sector, and the addition of a generic term such as the suffix “garden” or “gardenplaza” is insufficient to diminish the distinctiveness of the famous mark NOVOTEL and does not set aside the association by the public with the Complainant’s hotel business.

b) Respondent has no rights or legitimate interests in the disputed Domain Names since Respondent (1) has not been authorized to register the Domain Names by Complainant; (2) is not known under the name “Novotel” alone or in association with the terms “Garden” or “Gardenplaza”; (3) is not making a legitimate non-commercial or fair use of the disputed Domain Names; and (4) finally given the notoriety of the NOVOTEL mark in the hotel business sector, the hotel online bookings links to which the disputed Domain Names resolve, which precisely correspond to Complainant’s main activity, demonstrate Respondent’s illegitimate practice under these Domain Names.

c) The Domain Names were registered and are being used in bad faith since:

- The NOVOTEL mark is worldwide renowned for hotel business services, and Respondent cannot plausibly asserts that he was not aware of Complainant’s NOVOTEL marks.

- Moreover, the precise combination of the word “novotel” with the terms “garden” and “gardenplaza” in the disputed Domain Names demonstrate such awareness by Respondent of Complainant’s NOVOTEL marks.

Considering the above, transfer of the disputed Domain Names to Complainant is sought.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of the disputed domain names, Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:

(i) The domain name is identical or 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 domain name; and

(iii) The respondent has registered and used the domain name in bad faith.

A. Identical or Confusingly Similar

Complainant owns and extensively uses the widely renowned trademark and service mark NOVOTEL, which designate hotel and restaurant services and has accordingly ensured its worldwide protection by registering the mark NOVOTEL throughout the world.

Complainant has also registered the domain name <novotel.com> on April 10, 1997, to actively operate a website allowing easy and fast online bookings by consumers of the NOVOTEL hotels worldwide.

Complainant uses also the word “Novotel” as a trade name since 1967.

Based on the evidences attached to the Complaint, Complainant has clearly established its exclusive rights on the NOVOTEL mark, and trade name.

The Panel finds, when comparing both disputed Domain Names <novotelgarden.com> and <novotelgardenplaza.com> with the mark NOVOTEL, that the disputed Domain Names are confusingly similar to Complainant’s mark. Indeed, the well-known mark NOVOTEL is entirely incorporated in both disputed Domain Names and remains, in the Panel’s view, the most distinctive component within the disputed Domain Names.

Adjoining the words “garden” and/or “plaza”, which are generic words often used in connection with distinguished hotels (eg.: Crown Plaza, Plaza Athénée, Park Plaza hotels, Royal Garden Hotels, etc.), is secondary and does not obliterate the distinctiveness of the mark NOVOTEL which continues to form the most predominant and attractive element within the contested Domain Names. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259; a respondent that simply adds numerals or generic terms to a complainant’s trademark does not avoid a finding that domain names (“ebaystores” and “ebaylive”) are found to be confusingly similar to a trademark in which the complainant has rights. See also GA Modefine S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424; the distinctive part of the Complainant’s trademark “Armani” constitutes the core element of the domain name, it is indeed obvious that although the Respondent’s domain name is composed of the word “armani” and the (descriptive) word “boutique”, the first of these terms is incontestably the principal part of the domain name. Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002; the domain name is confusingly similar to the complainant’s trademarks, because within the disputed domain name, there is no doubt that the predominant element is “toyota” which is distinctive and eligible for protection per se and clearly isolable within the combination <toyota-occasions.com>.)

Furthermore, the addition of the generic top-level domain (gTLD) “.com” to the Domain Names in conflict is without legal or relevant significance and does not set aside their confusing similarity with the mark NOVOTEL; See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003- 0696; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (finding the domain name <talk-city.com> to be confusingly similar to the trademark TALKCITY).

Based on the above, the Panel finds that the overall impression of the disputed Domain Names supports the risk for the public of mistakenly associating them with the famous NOVOTEL brand and Complainant’s related official website.

Considering the above facts, the Panel finds that the Domain Names at issue are indeed confusingly similar to Complainant’s NOVOTEL mark.

B. Rights or Legitimate Interests

Respondent failed to reply to the Complaint and did not submit any evidence supporting a legitimate right or interest in the Domain Names <novotelgarden.com> and <novotelgardenplaza.com>.

Based on the submissions made by Complainant, the Panel notes that Respondent (1) is not affiliated to Complainant; (2) is not a licensee or an authorized distributor of Complainant; and (3) has not been authorized by Complainant to use and register the mark NOVOTEL as part of its Domain Names.

The Panel further notes that the Domain Names <novotelgarden.com> and <novotelgardenplaza.com> both resolve to the same website “www.hotels1x1.com” relating to online hotel bookings in turn leading through the displayed link containing the combination of terms “novotel garden (plaza) Saigon hotel” to another related website “www.precisionreservations.com,” also specialized in online hotel booking. Both websites seem at first unrelated to Respondent.

However, after researching the appropriate WHOIS databases for both websites “www.hotels1x1.com” and “www.precisionreservations.com”, the Panel uncovered that the owner of the website “www.hotels1x1.com” seems to be GBT who is the Respondent in the present UDRP proceeding. Accordingly, the commercial website “www.hotels1x1.com” to which the disputed Domain Names refer in the first place appears to be owned by the Respondent, and considering the posted content of this website relating to online hotel booking, the Panel considers that this website is directly competing with the services offered by Complainant’s official website, at least in connection with online booking at the NOVOTEL hotels in Vietnam.

Based on the above finding, in the Panel’s view, Respondent is intentionally using the disputed Domain Names to divert Internet users to Respondent’s own website which is exclusively dedicated to worldwide hotel booking, and which in turn reroute such consumers to, as the Panel assumes, one of Respondent’s business affiliated websites “www.precisionreservations.com”; a specialist in hotel booking in the Asian region.

The Panel considers that Respondent is subtly and illegitimately using such Domain Names to misleadingly divert Internet users to two successive online booking websites related to him or to his business and generate accordingly commercial profit by capitalizing on the fame of the NOVOTEL mark. Such use by Respondent of the Domain Names at issue cannot be considered a bona fide offering of goods or services by Respondent, and does not create any right or legitimate interest in the Domain Names. See Verisign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; respondent’s only demonstrated use of the disputed domain names has been in connection with redirecting Internet users to websites unrelated to Complainant. Such use is hereafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.

It should be noted further that no submissions were made by Respondent establishing that Respondent is commonly known by the disputed Domain Names, nor that Respondent is making a legitimate non commercial or fair use of the Domain Names.

In light of the above, the Panel considers that Respondent did not demonstrate any of the circumstances required under paragraph 4(c) of the Policy, and concludes that Respondent had no rights or legitimate interests in the disputed Domain Names.

C. Registered and Used in Bad Faith

Based on the submissions and evidence provided in this case by Complainant, the Panel is of the opinion that Respondent has registered and is using the disputed Domain Names in bad faith for the following reasons:

- Considering that Complainant’s mark NOVOTEL is renowned for hotels and restaurants services, and that Respondent operates the “www.hotels1x1.com” website, the content of which is only the offering of hotel reservations services worldwide and which is also Complainant’s line of business, the Panel is persuaded that Respondent was certainly aware, at the time of registration of the disputed Domain Names, of the exclusive rights held by Complainant in the well-known mark NOVOTEL, and thus Respondent can not reasonably invoke a justified reason for incorporating in good faith the NOVOTEL mark in the disputed Domain Names. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (<htmlease.com>) finding that respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith.

- Furthermore, in Exhibit (1) of the Complaint, Complainant brought to the Panel’s attention that, after sending two cease and desist letters to Respondent, the latter changed its name from “Everlasting Friendship Trust” to GBT but kept the same address of Everlasting Friendship Trust, and provided the same address for GBT’s administrative and technical contacts. The Panel shares Complainant’s views and considers, based on Complainant’s submissions of the two different WHOIS database searches conducted before and after sending the claiming letters, and in the absence of any evidence to the contrary in this regard, that Everlasting Friendship Trust and GBT are probably the same entity, and such change of name could be interpreted as a further maneuver from Respondent to evade any possible action from Complainant. See Nintendo of America Inc. v. Berric Lipson, WIPO Case D2000-1121, finding that “Respondent’s providing false contact information, in an obvious attempt to remain elusive, is an indication of bad faith”. In that regard, the Panel takes further into consideration the relevant fact that “EFT Everlasting Friendship Trust” (as first registrant of the disputed Domain Names) was recently involved in two other UDRP proceedings for the unauthorized use of the famous NOVOTEL mark within Respondent’s domain names <novotelnewyork.com> and <novotelkrabi.com>. Both panels in these recent UDRP proceedings ordered the disputed domain names to be transferred to Complainant. See Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0288 and Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0626. The Panel resolves accordingly that Respondent’s practice of targeting and registering four domain names containing Complainant’s mark NOVOTEL within the same year and without justified reasons is a further indication that the contested Domain Names in the present Complaint were registered and are being used by Respondent in bad faith.

- Respondent’s bad faith is further illustrated by the fact that Complainant has attempted, prior to submitting the Complaint to the Center, to resolve this issue with Respondent (who at this time was identified by the name of EFT Everlasting Friendship Trust) in an amicable way by sending cease and desist letters informing Respondent of Complainant’s rights in the NOVOTEL mark, and requesting the transfer of the disputed Domain Names to Complainant. Respondent failed to reply to Complainant, and did not abide by the legitimate request of Complainant, whose trademark rights were duly evidenced. The Panel considers that Respondent’s persisting silence and failure to take any appropriate action in relation to Complainant’s requests may be interpreted as further evidence of bad faith. See eBay Inc. v. Sunho Hong, WIPO Case D2000-1633, finding that respondent had ignored complainant’s request to transfer ownership of the domain name. Failure to positively respond to a complainant’s efforts to make contact provides “strong support for a determination of ‘bad faith’ registration and use”.

- Moreover, the fact that Respondent is using the Domain Names at issue to lure Complainant’s potential clients by first directing them to his own website “www.hotels1x1.com” and rerouting them afterwards to another website “www.reservationprecisions.com” which lists numerous other hotels located in Ho Chi Minh city and the Asian region where Complainant’s hotel “Novotel Garden Plaza” is located is harming Complainant’s business as it entices such potential consumers to book rooms at hotels other than the “Novotel Garden Plaza” which can only cause financial losses to Complainant. Such use by Respondent of the disputed Domain Names is further evidence of Respondent’s bad faith. See Littleford Day Inc. v. NRM Equipment Company, WIPO Case D2004-0201, finding that the fact that Respondent used <littlefordday.com> to automatically redirect users to its website located at “www.nrmequipment.com” was evidence of bad faith. See also Marriott International, Inc. v. Vladimir Kyznetsov, National Arbitration Forum Case No. FA95648, finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that promoted travel and hotel services identical to the services offered by complainant. See also National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128.

- From the above findings, it can also be inferred that Respondent is exploiting the Complainant’s goodwill and deluding the Complainant’s clientele by using the Domain Names at issue to attract them to its website.

Considering the overall circumstances and facts of this case, the Panel determines that Respondent, by registering and using the Domain Names at issue, has met the requirements of paragraph 4(b)(iv) of the Policy by harming Complainant’s online business by deliberately attracting and diverting potential consumers to Respondent’s own booking website after creating a likelihood of confusion with Complainant’s mark NOVOTEL as to the source, sponsorship, affiliation or endorsement of its website and business related websites. Respondent has purposely created this situation, and such act constitutes evidence of registration and use of the Domain Names 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 names <novotelgarden.com> and <novotelgardenplaza.com> be transferred to the Complainant.

Dina Founes
Sole Panelist

Dated: October 6, 2005