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Accor v. Everlasting Friendship Trust [2005] GENDND 771 (23 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Everlasting Friendship Trust

Case No. D2005-0288

1. The Parties

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

The Respondent is Everlasting Friendship Trust, Jersey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <novotelnewyork.com> is registered with AAAQ.com, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2005. On March 21, 2005, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 11, 2005, AAAQ.com, Inc. 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 April 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2.005.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on May 9, 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

Accor is the European leader and one of the world’s largest groups in travel, tourism and corporate services. The Complainant owns about 4,000 hotels in 90 countries worldwide and it operates several hotels especially in the United States of America and precisely in New York.

The group Accor holds among others trademarks SOFITEL, IBIS, MOTEL 6 and NOVOTEL. Novotel is present in 61 countries around the world, with 401 hotels. The Complainant owns and mainly communicates on the Internet via the websites “www.novotel.com” in order to allow the Internet users a quick and easy finding and booking of its hotels.

Accor has rights in NOVOTEL, a well-known trademark protected worldwide, for hotels and restaurants, among which:

- 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 classes 43.

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

Besides, Novotel is protected as a trade name.

Since November 25, 2004, the Respondent holds the disputed domain name.

Prior to the issuing of the Complaint, the Complainant made efforts to identify and contact the holder of the domain name (Germancoconut), using the details then current on the Registrar’s Whois database. During the course of these attempts, the domain name was transferred to the current Respondent (Everlasting Friendship Trust). The Complainant then renewed its efforts to contact the current Respondent which disclosed that the contact address was for a person unassociated with the Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has a registered trademark in NOVOTEL. Complainant further contends that the domain name is identical with and confusingly similar to the NOVOTEL mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent

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

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy, it is necessary that the complainant prove, as required by Paragraph 4(a) of the Policy, that:

(i) the contested 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.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under Paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint,” whilst under Paragraph 14(b) it “shall draw such inferences there from as it considers appropriate.”

A. Identical or Confusingly Similar

This Panel is satisfied that the Complainant has very extensive rights in the trademark NOVOTEL throughout the world.

The Complainant asserts that adding a geographical identification does not give distinctiveness to the domain name in dispute. Therefore, the domain name is confusingly similar to some or all of the NOVOTEL trademarks.

The domain name <novotelnewyork.com> is not identical to trademarks of the Complainant, but integrates in its entirety the wordmark NOVOTEL followed by the letters “newyork”. The addition of a geographical name to a trademark does not exclude confusing similarity see Wal-Mart Stores Inc v. Walmarket Canada, WIPO Case No D2000-0150, (domain name <walmartcanada.com>). UDRP panels considering similar cases where registrants simply added a country name to a registered trademark have found such domain names to be confusingly similar. Furthermore, see AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553, where domain names incorporating the AT&T trademark plus a country or place name were found to be confusingly similar to the AT&T trademarks; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, where domain names were confusingly similar because the “addition of a place name generally does not alter the underlying mark to which it is added.” And Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, where <cellularonechina.com> domain name was found to be identical or confusingly similar to the CELLULARONE trademark. Finally, the addition of the generic tld indicator “com” to the domain name is not to be taken into consideration when judging confusing similarity.

The Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy Paragraph 4(a)(ii).

Respondent is not affiliated with Accor and has not received any permission or consent to use the NOVOTEL mark.

The Policy Paragraph 4(c) lists three nonexclusive circumstances for the Panel to conclude that Respondent has rights or legitimate interests in the domain name but the file contains no evidence that the use of the domain name meets the elements for any of the circumstances provided for in the Policy Paragraph 4(c).

Therefore, based on the case file, the Panel finds that Respondent has no rights or legitimate interests in the domain name pursuant to the Policy Paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy Paragraph 4(b) sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names.

The fact that the domain name at issue initially pointed to a webpage which was dealing with online hotel reservation and booking through hyperlinks to other commercial websites in the field of tourism and travel. Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the world, it is not possible to conceive of a plausible circumstance in which Germancoconut and the Respondent could legitimately use the domain name <novotelnewyork.com>. It is also not possible to conceive of a plausible situation in which Respondent would have been unaware of this fact at the time of registration.

There are others factors that can support a finding of bad faith.

One of such factors is that Respondent has made no use of the domain name or has not developed any active website at “www.novotelnewyork.com” since Complainant requested for amicable transfer to Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Another factor is the use of Complainant’s entire mark in the domain name, thus making it difficult to infer a legitimate use of the domain name by Respondent.

A third factor found to support a finding of bad faith is Respondent’s knowledge of Complainant’s mark at the time of registration of the domain name.

The evidence establishes: (i) inaction by Respondent in the use the domain name to post any content on the Internet or for any other legitimate purpose; (ii) the use of Complainant’s entire mark and the absence of any plausible use of the domain name that would constitute good faith; (iii) constructive knowledge by Respondent of Complainant’s rights in the NOVOTEL mark upon the registration of the domain name.

Based upon this evidence, the Panel finds that Complainant has shown that the domain name was registered and used in bad faith pursuant to the Policy Paragraph 4(a)(iii).

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 <novotelnewyork.com> be transferred to the Complainant

Manuel Moreno-Torres
Sole Panelist

Dated: May 23, 2005