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Accor v. Noldc Inc. [2005] GENDND 309 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Noldc Inc.

Case No. D2005-0016

1. The Parties

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

The Respondent is Noldc Inc., New Orleans, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thenovotel.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2005. On January 6, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 6, 2005, Intercosmos Media Group d/b/a directNIC.com 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. 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 February 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2005.

The Center appointed Edoardo Fano as the sole panelist in this matter on April 4, 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 language of the proceeding is English, being the language of the Registration Agreement.

4. Factual Background

Accor runs famous hotels under the name NOVOTEL. NOVOTEL is a well-known trademark protected worldwide, in particular, for hotels and restaurants.

The concept of NOVOTEL, which has operated since 1967, is to provide a modern, comfortable accommodation, combined with restaurants, rooms to work, to relax and to park. NOVOTEL has been the first to introduce the concept of modern chain hotels to France. 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 is also firmly in place in North and South America, Africa, Asia and Australia.

Accor is the owner of several international trademark registrations, among which:

- NOVOTEL, n° 767863;

- DOLFI NOVOTEL & Design, n° 703528;

- NOVOTEL (with logo), n° 618550;

- NOVOTEL (with logo), n° 564565;

- NOVOTEL, n° 542032;

- NOVOTEL (with logo), n° R352918.

The Complainant has noticed that the domain name <thenovotel.com> has been registered. A Whois Database search revealed that said domain name was registered by the Respondent.

The Complainant tried to contact the Respondent in order to reach an amicable transfer of the disputed domain name, however, the Respondent never replied.

The Respondent’s domain name <thenovotel.com> was registered on June 28, 2001.

The website at “www.thenovotel.com” states it is “under construction” although it directs Internet users to DirectNic search engine.

5. Parties’ Contentions

A. Complainant

The domain name <thenovotel.com> reproduces entirely the marks NOVOTEL with the mere addition of the term “the” which does not serve to distinguish the domain name from the Complainant’s trademark.

Furthermore, it has been held in numerous decisions that the addition of the domain name indication ‘.com’does not remove the likelihood of confusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), merely because it is necessary for the registration of the domain name itself. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous mark and the domain name.

The Respondent is not affiliated with the Complainant. The Complainant has not authorized the Respondent to use and register its trademarks or 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.

Furthermore, the Respondent has no prior rights or legitimate interests in the domain name. The Respondent has never used the term “novotel” or “thenovotel” in any way before or after the Complainant developed its hotel chain. Furthermore, the Respondent is not known under the name ‘Thenovotel’ or any similar term.

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 Respondent knew or must have known of the NOVOTEL Hotel Chain, at the time it registered the domain name and all the more as this mark is very famous especially in the field of hotels and restaurants.

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’s owner is preventing the Complainant from registering said domain name.

The fact that there is no active website linked to the disputed domain name is another element which shows 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.

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 tarnishes the reputation of the mark.

Thus the Respondent, by registering a domain name corresponding to a famous name it could not have been unaware of, intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. This conduct constitutes evidence of bad faith use, since the Respondent is trying to profit from the reputation of Complainant’s trademarks by increasing the traffic on its website thanks to the mere reproduction of somebody else’s trademark. This constitutes a bad faith use of the domain name in dispute (The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).

The domain name was registered in bad faith, if only because said domain name is composed of the Complainant’s trademark with the addition of term “the,” which has no particular meaning except a grammatical sense and use. It is unconceivable that the Respondent has chosen the previous and famous invented word NOVOTEL for its 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.

The lack of good faith of the Respondent also arises from the fact that it decided not to reply to the Complainant’s attempts to reach an amicable settlement of the issue.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.

A Respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; AltaVista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:

i. the domain name is identical or confusingly similar to a trade mark 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

As far as the first of the tests is concerned, the Panel finds that the Complainant is the owner of the trademark NOVOTEL both by registration and acquired reputation and that the disputed domain name <thenovotel.com> is confusingly similar to the trademark NOVOTEL.

It is well accepted that a top-level domain, in this case .com, is to be ignored when assessing identity of mark and domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5 and has no obvious connection with the disputed domain name.

The Complainant has not authorized the Respondent to use and register as domain names the Complainant’s trademark, neither is the Respondent known by the name “thenovotel”. These facts, together with Complainant’s other assertions that the Respondent has no rights or legitimate interests in the domain name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.

However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that the second test of the Policy, paragraph 4(a) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) that the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

As regards the registration and use of the disputed domain name in bad faith, the reputation of the Complainant’s trademark has been established and the Panel finds that the Respondent knew or should have known that the disputed domain name <thenovotel.com> was confusingly similar to a trademark of a third party (see, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Ltd, WIPO Case No. D2000-0163; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Lian Ming, WIPO Case No. DWS2003-0001; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Antonietta Maria Loprete, WIPO Case No. DRO2003-0004).

The Complainant has annexed a printout from the Respondent’s webpage at “www.thenovotel.com”. The Panel has also inspected the website which seems to resolve to a search engine called DirectNic, although at the top of the home page it says that the relevant website is “under construction”. The Panel finds that the use of such search engine at the Respondent’s website could induce Internet users to think that the services provided on that webpage are somehow related to the activities of the Complainant.

The record shows that the Respondent is using the domain name to attract visitors to its website, which users are then taken through the links provided on the website to other websites offering commercial services. The Panel gives no relevance to the fact that the websites accessed in this manner are not owned or run by the Respondent, see, Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, in which it was stated that “The Panel finds that the Respondent’s commercial use of the Domain Name to increase Internet traffic directed at a search engine operated by Roar.com Pty Ltd. is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the Domain Name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the search engine and its operator/s”.

Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of registration and use 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 <thenovotel.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist

Dated: April 18, 2005