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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR v. Tara Rossi

Case No. D2006-0360

 

1. The Parties

The Complainant is ACCOR, Evry, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Tara Rossi, Youngstown, Ohio, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <centrehotelnovotel.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 22, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 22, 2006, Go Daddy Software 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 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2006.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on May 9, 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

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 140 countries worldwide.

The group Accor holds among others trademarks SOFITEL, IBIS, MOTEL 6 and NOVOTEL. Novotel is present in 56 countries around the world, with 412 hotels. The Complainant owns and mainly communicates on the Internet via the websites “www.novotel.com” in order to allow Internet users a quick and easy finding and booking of its hotels.

Among the hotels that Accor runs are the famous Novotel hotels. Novotel is a well-known trademark protected worldwide in particular for hotels and restaurants. Accor is the owner of numerous trademark registrations throughout the world related to its Novotel hotels, especially in the field of hotels and restaurants and of Internet services, among which are:

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.

NOVOTEL is also protected as a trade name.

When the Complainant noticed the registration of the domain name <centrehotelnovotel.com> it sent a warning letter to the Respondent, asking her to transfer the domain name. The Respondent did not reply to said letter nor to a subsequent reminder, despite duly receiving both of them.

The domain name <centrehotelnovotel.com> was linked to a website with pornographic content (Annex 3).

 

5. Parties’ Contentions

A. Complainant

According to the Complainant, the domain name <centrehotelnovotel.com> is identical or confusingly similar to the Complainant’s trade marks because it reproduces them entirely with the mere adjunction of the terms “Centre” and “Hotel”. These terms are only descriptive of the activity performed under the NOVOTEL trademark. It is a widely recognized principle in trademark law that the mere adjunction of a descriptive term to a famous trademark does not suffice to avoid a risk of confusion. Confusion is only heightened when the generic word added by the Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark. In the instant case, the addition of the words “centre” and “hotel” tends to compound the confusion.

The Complainant further states that the Respondent has no rights nor legitimate interests in respect of the domain name in dispute under Paragraph 4(a)(ii) of the Policy. The Respondent is not affiliated with the Complainant in any way. The Complainant did not authorize the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating said marks.

The Respondent has no prior rights or legitimate interest in the domain name. The registration of several NOVOTEL trademarks and of the various domain names owned by the Complainant preceded the registration of the domain name <centrehotelnovotel.com> for years. More particularly, the Complainant registered the domain name <novotel.com> on April 10, 1997.

Similarly, the Respondent is not known under the name “Novotel”, or “Centre Hotel Novotel” or any similar term. Furthermore, it is unlikely the term “Centre Hotel Novotel”, composed of a renowned trademark and two descriptive and generic words relating to the Complainant’s business, to be a random choice.

Finally, the Respondent is not making any legitimate non-commercial or fair use of the domain name, as the domain name in dispute proposes several links to pornographic websites. The Respondent’s use of the disputed domain name as a link to numerous websites with pornographic content may cause a typical Internet user to associate the domain name and its pornographic content with the activities legitimately developed by the Complainant. This use cannot be considered as a bona fide offering of services under Paragraph 4(c)(i) the Policy. A page linking to websites with pornographic content contributes to discredit the reputation of the trademark NOVOTEL.

As far as use and registration in bad faith of the disputed domain name is concerned, the Complainant asserts the following.

With regard to the sole registration in bad faith, it seems obvious that the Respondent knew or must have known of NOVOTEL hotels at the time it registered the domain name. It seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the domain names as the very precise combination of the words “novotel”, “hotel” and “centre” clearly indicates the Respondent had the Complainant in mind while registering the domain name at dispute.

The pornographic content of the Respondent’s website, as it existed when the Complaint was initiated, constitutes a significant indication bad faith. Prior decisions have consistently articulated support for this position, based on the concept of tarnishment (ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 , “the use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”; America Online v. Viper, WIPO Case No. D2000-1198, “The fact that the site operated by Respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith.”; MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205, “The Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark.”; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661, citing Coral Trademark Limited v. Eastern Net, Inc., WIPO Case No. D2000-1295, “the posting of pornographic contents on a website under a domain name that corresponds to a third party’s mark is a bad faith use of the domain name” (Annex 10)).

Moreover, the Respondent apparently did register the domain name at stake on purpose, to discredit the Complainant’s business, as it used the domain name <centrehotelnovotel.com> in connection with a pornographic website.

Thus, the Respondent registered the domain name in dispute while being perfectly aware that it was infringing the Complainant’s rights.

The Respondent, by registering a domain corresponding to a famous name could not ignore it and 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 use in bad faith, since the Respondent is trying to gain profit from the Complainant’s trademark’s reputation, by increasing traffic on its website thanks to the mere reproduction of somebody else’s trademark.(The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).

For all the reasons mentioned above, it is established that the Respondent did both register and use the domain name <centrehotelnovotel.com> in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

B. Respondent

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

 

6. Discussion and Findings

Since the Respondent did not submit any response and consequently did not contest any of the Complainant’s contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the allegations referenced in the headings of paragraphs A., B., and C. below.

A. Identical or Confusingly Similar

The Panel finds that the domain name <centrehotelnovotel.com> is confusingly similar to the Complainant’s trade marks NOVOTEL. As the Complainant correctly states, the mere addition of the terms “centre” and “hotel” to the Complainant’s mark does not avoid a likelihood of confusion. The terms “centre” and “hotel” are deprived of distinctive character and refer to the Complainant’s activity. Therefore, rather than avoiding or at least diminishing the likelihood of confusion with the Complainant’s earlier mark NOVOTEL, they increase it. Earlier UDRP decisions have reached the same conclusion when the domain name at issue contains the Complainant’s mark with the mere addition of one or more descriptive terms referring to the Complainant’s activity.

For the aforementioned reasons, the Panel is satisfied that the condition under Paragraph 4(a) (i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name.

Proving a negative fact is always a very difficult task. The Policy, under Paragraph 4(a), indicates a series of circumstances that, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain name. However, the Respondent did not present any evidence nor convincingly argue that it has rights or legitimate interests in the domain name at issue. Accordingly, the Panel will consider whether the case established by the Complainant is sufficient to show the Respondent’s lack of rights and legitimate interests.

More specifically, according to the Complainant, the Complainant never authorized the Respondent to register its NOVOTEL trademark as a domain name, nor is the Respondent affiliated with, or in any other way connected to, the Complainant. The Respondent is not known under the term Novotel, or as Centre Hotel Novotel.

Finally, in the Panel’s view, the Respondent’s unauthorized use of the domain name at stake, reproducing the well-known Complainant’s trademark for a pornographic website, amounts to an illegitimate commercial or unfair use of the domain name as it unduly takes advantage of and/or causes detriment to the distinctive character and the reputation of the Complainant’s mark.

For all the aforementioned reasons, the Panel takes the view that the Respondent lacks any rights or legitimate interests in the domain name <centrehotelnovotel.com>.

In consideration of the foregoing, the Panel is satisfied that also the condition under Paragraph 4(a) (ii) of the Policy is met.

C. Registered and Used in Bad Faith

The last condition that the Policy requires to meet is the one provided under Paragraph 4(a) (iii): i.e., that the domain name has been registered and is being used in bad faith.

In the Panel’s view, the Complainant proved that the domain name <centrehotelnovotel.com> was registered and is being used in bad faith.

As far as registration is concerned, the Complainant’s NOVOTEL trademarks are renowned throughout the world, given their extensive use in 56 countries around the world, with 412 hotels, as it appears in the Complaint and in the Complainant’s website at “www.novotel.com”. The reputation of the NOVOTEL trademark was already assessed in at least one earlier UDRP decision (Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0288).

Therefore, it is not realistic that the Respondent registered the domain name at stake by accident or coincidence. This is even more so considering that the disputed domain name consists of the Complainant’s well-known trademark NOVOTEL plus the terms “centre” and “hotel”, the latter making reference to the Complainant’s activity. This additional consideration leads the Panel to the conclusion that the Respondent was well aware of the Complainant’s renowned trademarks and activity when she applied for the registration of domain name <centrehotelnovotel.com>.

Due to the above considerations, the Panel concludes that the domain name <centrehotelnovotel.com> was registered in bad faith.

With respect to use in bad faith, the Panel takes the following view.

It is highly likely that the Respondent by using the domain name, intentionally attempted to attract Internet users to her web site, by creating a likelihood of confusion with the Complainant’s mark. The domain name <centrehotelnovotel.com> is of a kind that misleads Internet users. Internet users could believe that the domain name leads to the Complainant’s official website gathering all Novotel hotels around the world (the words “centre hotel”, which should be understandable to the majority of users/consumers, coupled with the NOVOTEL mark, convey the idea of a centralized website containing information on the Complainant’s different hotels and possibly also allowing on-line reservations). Thus, Internet users looking for the Complainant’s services would most probably be attracted to the Respondent’s website where, rather than finding information on the Complainant’s hotels, they find pornographic contents.

As already pointed out in many earlier UDRP decisions, the registration and use of a domain name identical or similar to a third party’s well-known trademark, without any right and to lead to a pornographic website, amounts to registration and use in bad faith since it takes unfair advantage of and damages the distinctive character and reputation of the third party’s mark (ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; - America Online v. Viper, WIPO Case No. D2000-1198; MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205; Coral Trademark Limited v. Eastern Net, Inc., WIPO Case No. D2000-1295).

In view of the above, the Panel believes that the Complainant satisfactorily proved also the third condition under Paragraph 4(a) (iii) of the Policy.

 

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, <centrehotelnovotel.com> be transferred to the Complainant.

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Angelica Lodigiani
Sole Panelist

Dated: May 22, 2006