WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Mohammad Ali Mokhtari
Case No. DIR2016-0004
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & Associés, France.
The Respondent is Mohammad Ali Mokhtari of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <novotel.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2016. On February 10, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 13, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 25, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 March 2, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2016. No Response was received. Accordingly, on March 23, 2016, the Center notified the Respondent’s default.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 6, 2016. 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 response to a Procedural Order of the Panel dated April 11, 2016, on that date the Center forwarded the Annexes to the Complaint to the Respondent electronically and gave the Respondent a further five calendar days to indicate any intention to participate in the proceeding. The Respondent did not make any response within that period.
4. Factual Background
The Complainant is a company registered in France. It is an operator of hotels and hospitality services worldwide, including a chain of hotels under the brand NOVOTEL.
The Complainant is the owner of numerous registrations for the mark NOVOTEL in various territories. Its registrations include Iranian trademark number 74563 for NOVOTEL, registered on December 29, 1994 in International Classes 39, 43 and 44, for goods and services including hotels.
The disputed domain name was registered on September 13, 2011.
There is no evidence of any active use of the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant states that it is a world-leader in economic and mid-scale hotels and a major player in upscale leisure services. It states that the NOVOTEL brand was founded in 1967 and offers an international 4-star, mid-scale brand for business and leisure travelers located in major international cities. As at June 30, 2015, it operated 414 NOVOTEL hotels in 59 countries including the United Arab Emirates. It has used the domain name <novotel.com> since 1997 to promote its services. The Complainant submits that as a result of these matters the mark NOVOTEL enjoys a worldwide reputation.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that the disputed domain name reproduces the Complainant’s mark NOVOTEL in its entirety and that the country code Top Level Domain (“ccTLD”) “.ir” should be discounted for the purpose of comparison.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never licensed or authorized the Respondent to use its NOVOTEL mark and that the Respondent has not commonly been known by that mark. The Complainant also submits that, since the disputed domain name resolves to an inactive web page, the Respondent appears to have made no demonstrable use of, or preparations to use, the disputed domain name in connection with any bona fide offering of goods or services.
The Complainant submits that the disputed domain name has been registered or is being used in bad faith. The Complainant contends that, owing to the fame of the NOVOTEL mark, it is implausible that the Respondent was unaware of the mark at the date the disputed domain name was registered and unreasonable to believe that the Respondent could have intended to make any legitimate use of the disputed domain name. The Complainant submits that the Respondent’s “passive holding” of the disputed domain name does not preclude a finding of bad faith. Additionally, the Complainant submits evidence that it sent a “cease and desist” letter and follow-up emails to the Respondent in November and December 2015 and states that no reply to these communications was received.
The Complainant requests a transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith.
Even in a case such as this where the Respondent has not responded to the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of registered trademark rights in the mark NOVOTEL. It has also established to the satisfaction of the Panel that, owing to its trading and promotional activities worldwide, its mark NOVOTEL has become widely known and is distinctive of the Complainant and its services. The disputed domain name is identical to the Complainant’s trademark NOVOTEL save for the ccTLD “.ir” which is typically to be disregarded for the purposes of assessing confusing similarity. In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has stated that it did not authorize the Respondent to use its mark NOVOTEL and that the Respondent has not commonly been known by the disputed domain name. It also asserts that the Respondent is unable to demonstrate any use of, of preparations to use, the disputed domain name in connection with any bona fide offering of goods or services. The Panel finds that these contentions give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to participate in this proceeding, or indeed to respond to the “cease and desist” communications sent to it by the Complainant. Accordingly the Panel has no evidence that the Respondent has any rights or legitimate interests in respect of the disputed domain name, whether on the grounds set out in paragraph 4(c) of the Policy or otherwise. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Used in Bad Faith
The Panel has found that the Complainant’s trademark NOVOTEL is widely known worldwide and is distinctive of the Complainant and its hotel services. The disputed domain name consists of an unadorned reproduction of the whole of the Complainant’s trademark together with a ccTLD. The Panel has no evidence that the name “Novotel” has any meaning in commerce other than to refer to the Complainant’s business and trademark and the Respondent has failed to participate in this proceeding or to offer any explanation for its choice of the disputed domain name. The Panel is unable to conceive of any legitimate use that the Respondent could make of the disputed domain name and infers in all the circumstances that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of impersonating the Complainant or otherwise taking unfair advantage of the Complainant’s goodwill attaching to its trademark. The Panel accepts the Complainant’s contention that the Respondent’s “passive holding” of the disputed domain name does not preclude a finding of bad faith in these circumstances. Accordingly, the Panel finds that the disputed domain name has been registered or is being used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <novotel.ir> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: April 18, 2016
