The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is CampsActionNetwork, Bellingham, United States of America.
2. The Domain Name and Registrar
The disputed domain name <novotelsiamsquare.com> is registered with !
$ ! Bid It Win It, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2005. On November 28, 2005, the Center transmitted by email to ! $ ! Bid It Win It, Inc. a request for registrar verification in connection with the domain name at issue. On November 29, 2005, ! $ ! Bid It Win It, 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 December 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2006.
The Center appointed Kristiina Harenko as the Sole
Panelist in this matter on January 19, 2006. 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 Complainant 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
The Respondenthas registered the contested
domain name <novotelsiamsquare.com> on May 12, 2005.
5. Parties’ Contentions
A. Complainant
The group Accor holds among others trademarks Sofitel,
Mercure, Motel 6 and Novotel. Novotel is present in 61 countries around the
world, with 401 hotels. NOVOTEL is a well-known trademark protected worldwide
in particular for hotels and restaurants. The trademark NOVOTEL has been recognized
as a well-known trademark, in the Accor v. Everlasting Friendship Trust,
WIPO Case No. D2005-0288.
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). The adjunction of the place “Siam Square”, located in Bangkok, is only descriptive of the location of one Novotel hotel and does not exclude confusing similarity.
Complainant contends that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy paragraph 4(a)(ii). The Respondent is not affiliated with Complainant in any way and the Respondent has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating its trademark. The Respondent has no prior rights or legitimate interest in the domain name and is not making any legitimate non-commercial or fair use of the domain name <novotelsiamsquare.com>.
Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii). It seems obvious that the Respondent knew or must have known the Novotel hotels at the time it registered the domain name. The very precise combination of the words “NOVOTEL” and “SIAM SQUARE” clearly indicates the Respondent had the Complainant in mind while registering the domain name in dispute. Moreover, the Respondent apparently did register the domain name on purpose to disrupt the Complainant’s business, as it used the domain name <novotelsiamsquare.com> with sponsored links to products and services related to same field of activities: hotels and assimilated services. The owner of a website posting pop-up ads receives click-through fees for diverting Internet users to the advertisers. Finally, the failure to respond to any Complainant’s email or concealment of correct contact information constitutes an element of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Pursuant to Policy, Complainant must prove the following elements.
(i) The domain name is identical or confusingly similar to a trademark in which it holds rights, and
(ii) Respondent has no right or legitimate interests in the domain name, and
(iii) The domain name was registered and used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The Complainant has proved that it has very extensive rights in the trademark NOVOTEL throughout the world.
The Complainant asserts that adding a geographical name does not give distinctiveness
to the domain name in dispute. Therefore, the domain is confusingly similar
to the numerous NOVOTEL trademarks registered by the Complainant. The Complainant
refers to decisions America Online, Inc. v. Dolphin@Heart; WIPO
Case No. D2000-0713, Accor v. Everlasting Friendship Trus, WIPO
Case No. D2005-0626; and Accor v. Everlasting Friendship Trust, WIPO
Case No. D2005-0288. Besides, the mere addition of the gTLD “com”
is not a distinguishing feature and do not change the likelihood of confusion
(Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003).
The Panel finds that the domain name is confusingly similar to a trademark NOVOTEL 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. The Respondent has not replied to the Complainant’s contentions and therefore has failed to invoke any right or legitimate interest it might have in respect of the disputed domain name. The arguments by the Complainant, as summarized here above under paragraph 5A, supported by means of proof submitted by the Complainant, have convinced the Panel that the Respondent has not had, nor has, any rights or legitimate interest in respect of the domain name <novotelsiamsquare.com>.
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.
It is likely that the Respondent knew or must have known the Novotel hotels at the time it registered the domain name. The very precise combination of the words “NOVOTEL” and “SIAM SQUARE” clearly indicates the Respondent had the Complainant in mind while registering the domain name in dispute. The Respondent apparently did register the domain name on purpose to disrupt the Complainant’s business, as it used the domain name <novotelsiamsquare.com> with sponsored links to products and services related to same field of activities: hotels and assimilated services.
The Respondent has, by registering a domain name corresponding to a famous
name it could not ignore, intentionally attempted to attract, for commercial
gain, Internet users by creating a likelihood of confusion with the Complainant’s
marks. The Respondent is thus trying to hire profit from the Complainant’s
trademarks’ reputation, by increasing the traffic on its website by merely
reproducing somebody else’s trademark. (The Nasdaq Stock Market, Inc.
v. Vidudala Prasad,WIPO Case No. D2001-1493).
Moreover, the owner of a website posting pop-up ads receives click-through fees
for diverting Internet users to the advertisers (COMSAT Corporation v. Ronald
Isaacs, WIPO Case No. D2004-1082).
The absence of a response by the Respondent to solicitations by the Complainant
or possible concealment of contact information constitutes also evidence of
bad faith (Banque Transatlantique S.A. v. DOTSCOPE, WIPO
Case No. D2004-1100). Respondent necessarily acted in bad faith on either
of the above-mentioned grounds.
In view of the evidence provided and the precedent found in similar cases the
Panel finds that the Respondent registered and used the disputed domain name
<novotelsiamsquare.com> 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 <novotelsiamsquare.com> be transferred to the Complainant.
Kristiina Harenko
Sole Panelist
Dated: February 2, 2006
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