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Blackmer S.A.S., Delaware Capital Formation Inc and Dover Corporation v. Environmental Pumping Ltd [2005] GENDND 473 (16 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACCOR v. WWWEnterprises Inc.

Case No. D2005-0025

1. The Parties

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

The Respondent is WWWEnterprises Inc. of Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> are registered with OnlineNic, Inc. d/b/a China-Channel.com.

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 OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On January 11, 2005, OnlineNic, Inc. d/b/a China-Channel.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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 20, 2005. 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 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2005.

The Center appointed Jens Schovsbo as the sole panelist in this matter on March 8, 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.

4. Factual Background

The company ACCOR is based in France and runs hotels all over the world under the trademarks NOVOTEL, SOFITEL and CORALIA. The trade marks are protected by numerous trademark registrations throughout the world in particular for hotels and restaurants. The registrations include inter alia:

- ACCOR: International Trademark n° 537520, filed on March 28, 1989, and covering products and services in classes 5, 8, 9, 11, 18, 21, 24, 25, 28 and 37; International Trademark n° 480492, filed on November 10, 1983, and covering products and services in classes 16, 39 and 42 (hotels and restaurants services).

- NOVOTEL: International Trademark n° 767863, in class 38. Said trademark is applied in particular to information transmission services; (with logo), International Trademark n° 564565, in classes 16, 20, 21 25, 35, 38, 39, 41, 42; International Trademark n° 542032, in class 42;

- SOFITEL: International trademark n°406255, filed on April 18, 1974 and covering goods and services in classes 01 to 42; US Federal trademark n°0995968, filed on October 15, 1974, and covering goods and services in class 42; Sofitel Accor Hotels and Resorts (semi-figurative), French trademark n°3116639, filed on August 13, 2001, and covering goods and services in classes 16, 35 and 42;

- CORALIA: French Trademark n° 93 497 546, filed on December 21, 1993 and covering goods and services in classes 3, 14, 16, 25, 35, 38, 39, 41 and 42; French Trademark n°92 437 932 filed on October 16, 1992 and covering goods and services in classes 3, 14, 16, 25, 28, 35, 38, 39, 41, 43 and 44.

In August 2004, the Complainant sent a warning letter via registered mail and e-mail to the Respondent requesting the amicable transfer of the concerned domain names. The Respondent never replied.

No active websites have been linked to the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration and use of the domain names <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> is in violation of Article 4, of the Policy, i.e. that;

(i) the domain names are identical or confusingly similar to the trademarks registered by the Complainant; and

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

(iii) the domain names have been registered and are being used in bad faith.

The arguments of the Complainant can be summarized in the following way:

(i) The domain names < wwwnovotel.net>, <wwwsofitel.net>, <coraliahotel.net>, <coraliahotels.net>, <accorvacances.net> are identical or confusingly similar to the trade marks of the Complainant because they reproduce entirely the trade marks of the Complainant with the mere adjunction of the letter “w” tripled or with the words “hotel(s)” or “vacances”.

(ii) The Respondent is not affiliated with the Complainant in any way. Furthermore, the Complainant has neither authorized the Respondent to use and register its trademarks or service marks nor to seek the registration of any domain name incorporating said marks.

(iii) The Respondent knew or must have known the ACCOR hotel chain and its trademarks at the time it registered the domain name. Furthermore, the fact that there is no active website linked to the disputed domain names shows that the Respondent does not use the domain names in good faith. Here the Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No D2000-0003. In the view of the Complainant, any actual or contemplated use of the domain names by the Respondent would be illegitimate taking into account the fact that the mark NOVOTEL is famous. The Complainant furthermore maintains that the group ACCOR is involved in very famous hotel-chains 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 ACCOR owns domain names without having constructed the website related to it, which would be quite unprofessional. The registration of the domain names thus tarnishes the reputation of the mark, and therefore the Complainant. The Complainant finally points to the minor differences between the domain names and the trademarks as evidence of the bad faith of the Respondent in the form of so-called “typo squatting”.

B. Respondent

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

6. Discussion and Findings

It follows from Paragraph 5(e) of the Rules that if a Respondent does not submit a response, then in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. The Panel does not find the present case to involve “exceptional circumstances”. The case will thus be decided based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant holds trademark rights in ACCOR, NOVOTEL, SOFITEL and CORALIA. The domain names <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> include the trademarks of the Complainant in full. The domain names <wwwnovotel.net> and <wwwsofitel.net> only differ from the trademarks by the addition of the letters “www”. The difference between the trademarks ACCOR and CORALIA and the domain names <accorvacances.net>, <coraliahotel.net>, and <coraliahotels.net> only consist in the addition to the domain names of the generic terms “vacances” (meaning: “holidays”) and “hotel(s)”.

The domain names cannot be regarded as being identical to the trademarks of the Complainant. In the view of the Panel, however, the domain names are clearly confusingly similar to the trademarks. The prefix “www” would be considered by Internet users as referring to the “world wide web”. The addition of such a purely generic term cannot bring the domain name outside the scope of protection of the trademark. The same goes for the suffixes “vacance” and “hotel(s)” which are purely descriptive.

The first condition in paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel has found no evidence of any rights or legitimate interests of the Respondent in the disputed domain names in the present case, only evidence from the Complainant indicating the opposite.

The second requirement of paragraph 4(a) of the Policy is also met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you 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 web site 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 web site or location or of a product or service on your web site or location.”

The Panel takes it for granted that the Respondent knew the ACCOR hotel chain and its trademarks at the time it registered the domain names. The Respondent has not offered any legitimate reasons for the registration of the domain names. In the view of the Panel, no such reasons exist. Any actual use of the domain names <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> by the Respondent would thus amount to bad faith in the sense described in sub-paragraph (iv) above. On this background, the Panel finds that the passive holding of the domain names is sufficient to satisfy the third and last requirement in paragraph 4(a) of the Policy as this rule has been understood in previous WIPO-cases, notably Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The third and last requirement of paragraph 4 of the Policy is thus also met.

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, <accorvacances.net>, <coraliahotel.net>, <coraliahotels.net>, <wwwnovotel.net> and <wwwsofitel.net> be transferred to the Complainant.

Jens Schovsbo
Sole Panelist

Dated: March 22, 2005