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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ACCOR v. Ata Kivilcim

Case No. D2006-1366

 

1. The Parties

The Complainant is ACCOR, 2, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Ata Kivilcim, Sans Souci, New South Wales, Australia.

 

2. The Domain Names and Registrars

The disputed domain names <ibisperth.com>, <mercureperth.com>, <novotellangley.com>, and <novotelperth.com> are registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2006. On October 27, 2006, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the domain name(s) at issue. On October 27, 2006, Wild West Domains, Inc.

Wild West Domains, 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 November 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2006. The Respondent subsequently sent an email to the Center on December 12, 2006, which the Center acknowledged on December 19, 2006, indicating that consideration of such email will be at the sole discretion of the Panel.

The Center appointed Kevin C. Trock as the sole panelist in this matter on January 15, 2007. 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

Complainant Accor was founded in 1967, by Paul Dubrule and Gйrard Pйlisson. It has immediately developed its activity worldwide, providing a large range of services. Complainant 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 is a well-known group of hotels.

Complainant owns trademark registrations for the marks MERCURE, IBIS, and NOVOTEL. Complainant is the owner of numerous trademark registrations throughout the world covering the mark MERCURE and especially in Australia (provided as Annex 14):

- MERCURE, International Trademark n° 847330, filed on December 13, 2004, and covering products and services in classes 39, 41, 43, protected especially in Australia;

- MERCURE, International Trademark n° 403334, filed on December 14, 1973, and covering products and services in classes 8, 16, 21, 39, 41 and 42;

- MERCURE, International Trademark n° 429159, filed on March 24, 1977, and covering products and services in classes 8, 16, 21, 42;

- MERCURE, International Trademark n° 639211, filed on July 13, 1995, and covering products and services in classes 16, 39, 42 ;

- MERCURE, International Trademark n°615787, filed on December 20, 1993, renewed and covering services in classes 8, 16, 42;

- HOTELS MERCURE, International Trademark n° 491965, filed on March 4, 1985, renewed and covering products and services in classes 8, 16, 21, 42;

- LES RENDEZ-VOUS DE MERCURE HOTELS, International Trademark n° 664980, filed on November 20, 1996 and covering products and services in classes 16, 41, 42;

- MERCURE, Australian Trademark n°612263, filed on September 23, 1993, and covering products and services in class 42;

- MERCURE, Community Trademark n°003966223, filed on July 20, 2004, and covering products and services in classes 39, 41, 43;

- GRAND MERCURE, Community Trademark n°005005707, filed on April 7, 2004, and covering products and services in class 43;

- MERCURE ACCOR HOTELS, French Trademark, n°04300827, filed on July 1, 2004 and covering products and services in classes 39, 41 and 43.

Complainant is the owner of numerous trademark registrations throughout the world covering the mark IBIS and especially in Australia (provided as Annex 15):

- IBIS ACCOR HOTELS, French Trademark n° 3258174 filed on November, 20, 2003, and covering products and services in classes 39 and 43;

- IBIS, International Trademark n° 420862 filed on February, 18, 1976, renewed and covering products and services in classes 8, 20, 21, 29, 36, 37, 39 and 42;

- HOTEL IBIS, International Trademark n° 431254 filed on June, 17, 1977, renewed and covering products and services in classes 16, 20, 21, 39 and 42;

- IBIS, International Trademark n° 541432 filed on July, 17, 1989, renewed and covering products and services in classes 38, 39 and 42;

- IBIS, International Trademark n° 623070 filed on August, 22, 1994, renewed and covering products and services in classes 16, 41 and 42;

- IBIS ACCOR HOTELS, International Trademark n° 829736 filed on May 13, 2004, and covering products and services in class 43, protected especially in Australia;

- IBIS, Australian Trademark n° 639611 filed on September 5, 1994, and covering product and services in class 42;

- IBIS, Australian Trademark n°864770 filed on February 2, 2001, and covering product and services in class 42;

- IBIS, Community Trademark n° 001527720 filed on June 6, 2001, and covering products and services in classes 16, 39 and 42.

Complainant is also the owner of numerous trademark registrations throughout the world covering the mark, NOVOTEL and especially in Australia (provided as Annex 16):

- 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 class 43;

- NOVOTEL, International Trademark n° 875041, filed on December 9, 2005, and covering products and services in class 43, protected especially in Australia.

- NOVOTEL, Australian Trademark n° 573960, filed on March 6, 1992, and covering products and services in class 42.

- NOVOTEL Australian Trademark n° 629980, filed on May 17, 1994, and covering products and services in class 42.

- NOVOTEL you’re welcome, Australian Trademark n° 647263, filed on December 1, 1994, and covering products and services in class 42.

- DOLFI NOVOTEL, Australian Trademark n° 765232, filed on June 18, 1998, and covering products and services in class 25, 28, and 41.

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

Mercure is present in 47 countries around the world, with 750 hotels. The Complainant owns and mainly communicates on the Internet via the websites “www.mercure.com” in order to allow the Internet users a quick and easy finding and booking of its hotels.

Ibis is present in 39 countries around the world, with more than 700 hotels. The Complainant owns and mainly communicates on the Internet via websites, and among others “www.ibishotel.com” in order to allow the Internet users a quick and easy finding and booking of its hotels.

Novotel is present in 61 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 the Internet users a quick and easy finding and booking of its hotels.

The Complainant sent a warning letter, dated November 16, 2005, by e-mail and registered letter, to the Respondent, asking him to transfer amicably the domain names (Annex 9).

The Respondent answered on November 18, 2005, that an independent domain names appraisal was to be made within 48 hours (Annex 10). On November 23, 2005, the Respondent offered to transfer the four domain names for an amount of 1.200$ U.S Dollars. (Annex 11).

The Complainant offered to the Respondent an amount of 50 Euros to proceed with the transfer of the four domain names as the amount of 1,200 U.S. Dollars exceeded the out-of pocket cost to register the domain names (Annex 12). Despite three reminders of his position, the Complainant received no answer.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain names use the trademarks and trade names MERCURE, IBIS and NOVOTEL. Complainant also alleges that the mere addition of the terms “perth” and “langley” would lead people to think that these domain names are specific to the hotels Mercure, Ibis and Novotel in Perth and to the hotels Novotel in Langley, and is insufficient to avoid any confusion. Complainant alleges that the only purpose of these registrations is to attract internet users to the domain names in because of their confusing similarity to the well-known trademarks MERCURE, IBIS and NOVOTEL.

As a result, Complainant alleges, it clearly appears that the domain names <mercureperth.com>, <novotelperth.com>, <novotellangley.com> and <ibisperth.com> are identical or at least confusingly similar to the trademarks owned by the Complainant.

Complainant also alleges that the Respondent is not affiliated with the Complainant in any way, and the Complainant has not authorized the Respondent to use or register its trademarks, or to seek the registration of any domain name incorporating the marks.

Complainant also alleges that the Respondent has no prior rights or legitimate interest in the domain names and that the Respondent is not making any legitimate non-commercial or fair use of the domain name. Complainant alleges that Respondent knew or must have known of the Mercure, Ibis and Novotel hotel chains at the time the disputed domain names were registered and that Respondent registered the disputed domain names in order to make a profit.

Finally, Complainant alleges that Respondent intentionally attempted to divert Internet user’s from the Complainant’s business by creating a likelihood of confusion with the Complainants’ trademarks.

B. Respondent

The Respondent did not file a timely response to the Complainant’s contentions and is therefore in default. The Respondent did send an email to the Center on December 12, 2006, after the time for filing a response to the complaint had already expired. The text of that email is as follows:

I have no intention of entering into the discussion regarding IP rights regarding several domains that were registered more than 14 months ago.

There was no malice or malicious intent on my part. As a matter of fact, the domains were registered for and on behalf of Novotel Langley Perth, Ibis Perth and Mercure Perth upon instruction by the General Manager of Novotel Langley Perth, a Mr. Goran Alexandrovski.

Mr. Alexandrovski was my neighbour in Perth, whilst residing at an apartment complex at […]. The registrations were carried out under instruction when Mr. Alexandrovski found out that I worked with computers and the internet. In essence, this was done as a favour after many promises were made to me regarding the redesign of web sites for Novotel Langley Perth, Ibis Perth and Mercure Perth.

I resent being directly harassed by the Accor Group, and their lawyers in France. I have done nothing to dilute the “good name” associated with these establishments, nor have I made any attempt to “mislead” the general public. The domains in question were never associated with a working web site.

I ask you formally to cease and desist.

Regards,

Ata Kivilcim

In accordance with paragraphs 14(a)(b) of the Rules, the Panel may decide the matter based on the complaint and may draw appropriate inferences from the Respondent’s default.

 

6. Discussion and Findings

Under Paragraph 4 (a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights in or legitimate interests to the domain name;

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a Complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant is the owner of numerous trademark registrations throughout the world for the marks MERCURE, IBIS and NOVOTEL especially in Australia. The domain names in dispute use these trademarks along with other terms. The terms “perth” and “langley” are the names of cities in Australia and in the United States of America. The addition of the terms “perth” and “langley” would likely lead people to think that these domain names are specific to the hotels Mercure, Ibis and Novotel in Perth and to the hotel Novotel in Langley.

Numerous WIPO decisions recognize that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute (see Sanofi-Aventis v. Carmen Capone, WIPO Case No. D2006-0112). Geographic terms are generally considered generic terms.

In PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629, the domain name included the Complainant’s mark, PEPSI, plus the geographically descriptive term “USA”. The Panel found that the Domain Name was confusingly similar to Complainant’s mark. Other decisions under the Policy have held that the addition of a descriptive term to a mark does not negate the confusing similarity between the mark and the domain name. See, e.g., C. &A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466 (domain name including the complainant’s mark and the geographical suffix USA was confusingly similar to the mark).

It is well established that the specific top level of a domain name such as “.com” or “.net” does not affect the domain name for the purpose of determining confusingly similarity. See DZ Bank AG v. Bentz, WIPO Case No. D2006-0414; Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223. Accordingly the extension “.com” is to be given little, if any, consideration when examining the identity or similarity between the Complainant’s mark and the disputed domain names.

For these reasons, the Panel has determined that the disputed domain names <mercureperth.com>, <novotelperth.com>, <novotellangley.com> and <ibisperth.com> are confusingly similar to the registered trademarks owned by the Complainant.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent is not affiliated with the Complainant in any way, and that the Complainant has not authorized the Respondent to use its trademarks, or to seek the registration of any domain name incorporating the marks. While the Respondent claims in its email to have registered the disputed domain names for and on behalf of the Complainant’s hotels, no evidence has been provided indicating that this is the case.

The registration of several of Complainant’s MERCURE, IBIS and NOVOTEL trademarks and of the various domain names owned by the Complainant preceded the registration of the disputed domain names <mercureperth.com>, <novotelperth.com>, <novotellangley.com> and <ibisperth.com> by Respondent.

The Respondent is apparently not known by the name “mercure”, “ibis”, “novotel”, “mercureperth”, “novotelperth”, “novotellangley”, or “ibisperth” or any similar term. The Respondent is apparently not making any legitimate non-commercial or fair use of the disputed domain names. The Respondent notes that the disputed domain names in question were never associated with an active webpage. The disputed domain names are “parked” on the Domain Name Parking Program of myGlobal-iD.com, U.S. Internet Service Provider. “Parking” a domain name does not constitute a bona fide offer of goods or services as required by the Policy paragraph 4(c)(i) See e.g. Washington Mutual, Inc. v. Ashley Khong, WIPO Case D2005-0740.

For these reasons, the Panel has determined that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include Paragraphs 4(b)(i) - (iv):

(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 Respondent clearly knew of the Mercure, Ibis and Novotel hotel chains at the time he registered the disputed domain names, and clearly had Complainant’s trade names in mind while registering the disputed domain names. The Respondent states as much in his email. While the Respondent claims to have registered the disputed domain names for and on behalf of the Complainant’s hotels, there is no evidence that this is the case, and any affiliation with the Respondent is denied by the Complainant. While the precise circumstances of the registration remain unclear, in the absence of clear evidence of authorisation from the Complainant, the Respondent’s explanation does not persuade the Panel.

It has been established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that it is very use by someone with no connection with the product suggests opportunistic bad faith”. See WIPO Case D2006-0303, Sanofi-Aventis v. Nevis Domains LLC.

It appears from the available evidence that Respondent registered the disputed domain name in order to make a profit from his registration, as it appears in the correspondence that he offered to sell the disputed domain names for U.S.D. 1,200. This amount is significantly higher than the out-of pocket costs of registering the domain names. Previous decisions have found that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is evidence of bad faith. See DZ Bank AG v. Bentz, WIPO Case No. D2006-0414, and Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372.

In addition, it appears that Respondent, by registering domain names corresponding to well-known trademarks may have diverted Internet users from the Complainant’s business by creating a likelihood of confusion with the Complainants’ trademarks. This conduct constitutes evidence of bad faith use and may harm Complainant’s reputation, by attracting Internet users to a web site that is not sponsored by the Complainant trademark owner. See Nominet Decision No. 01831, SFR v. Redpoint Consulting Ltd.

Accordingly, for the reasons stated above, the Panel finds that the Respondent registered and uses the disputed domain names <mercureperth.com>, <novotelperth.com>, <novotellangley.com> and <ibisperth.com> in bad faith in accordance with 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 names be transferred to the Complainant.

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Kevin C. Trock
Sole Panelist

Dated: January 30, 2007