On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100004
Time of Filing 2009-01-12 11:19:35
Disputed domain name NOVOTELVIETNAM.COM
Case Administrator
Name Tereza Bartošková
Complainant
Organization ACCOR
Authorized Representative
Organization Dreyfus & associés
Respondent
Organization VNT Corporation
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Factual Background
The Complainant operates hotels worldwide under the NOVOTEL brand including four hotels in Vietnam.

The Complainant is the owner of a number of registered trade marks consisting of or containing the word NOVOTEL, in a number of countries throughout the world, including Vietnam, and covering a range of goods and services, particularly in relation to hotels and restaurants. The earliest of the NOVOTEL trade marks registrations is international trade mark no. 352918, filed 25 November 1968.

The Complainant is the registrant of the domain names novotel.com; novotelhotels.com and novotelresort.com all of which were registered prior to the registration of the disputed domain name.

The domain name in issue <novotelvietnam.com>, was registered by the Respondent on 2 July 2008 with the registrar GODADDY.COM, Inc. This domain name resolves to a website featuring sponsored links for hotels in Vietnam.
Parties' Contentions
A. Complainant
The Complainant contends that:

A. It has rights in the trade mark NOVOTEL and that the disputed domain name is confusingly similar to that mark:

i. It owns and operates several hotels under the name NOVOTEL.

ii. It owns numerous trade marks throughout the world for the NOVOTEL brand especially in the field of hotels and restaurants.

iii. It operates a number of websites using domain names which reflect its trade mark NOVOTEL.

iv. The disputed domain name reproduces entirely the Complainant’s trade mark NOVOTEL. The addition of the term ‘vietnam’ leads people to think that the domain name is specific to NOVOTEL hotels in Vietnam and increases the likelihood of confusion.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

i. The Respondent is not affiliated with the Complainant, nor is it authorised to use the Complainant’s trade mark NOVOTEL, or seek the registration of any domain name incorporating that mark.

ii. The Respondent has no prior rights or legitimate interests in the domain name.

iii. The Respondent is not known under the name NOVOTEL, nor has it used that name before the Complainant started its business.

iv. The registration of the Complainant’s trade marks precede the registration of the domain name.

v. The disputed domain name is so identical to the famous trade marks of the Complainant, that the Respondent could not reasonably pretend it was attempting to conduct a legitimate activity.


C. The domain name was registered and is being used in bad faith:

i. The Respondent knew or must have known of the Complainant’s well known trade mark NOVOTEL at the time it registered the domain name.

ii. The Respondent registered the domain name using false co-ordinates before using a privacy protection service .

iii. The disputed domain name resolves to a website containing sponsored links for hotels in Vietnam which indicates that the Respondent knew of the Complainant’s activity at the time that the Respondent registered the domain name .

iv. After receiving the Complainant’s cease and desist letter the Respondent used a privacy shield by changing the name of the registrant of the domain name to ‘Domains by Proxy, Inc ’.

v. The Respondent has not denied it knew of the Complainant when it registered the domain name and in correspondence has referred to the ‘French giant’ and ‘Goliath’ to describe the French hotel company NOVOTEL.

vi. The Respondent has registered the domain name to capitalise on the Complainant’s well known name to derive revenue from it.

B. Respondent
The Response was filed on 15 January 2009. Deficiencies in the Response were notified via the online platform. These deficiencies were not rectified by the Respondent with the result that the Response is not admitted to proceed further in the Administrative Proceedings.

The substance of document filed by the Respondent, in addition to the automated content of the form of Response, simply states:

”you may have the domain if the company just ask nicely. Rather than send a threating letter from a Law firm, Just ask and you will received.
it's that simple.
ciao,
webmaster”.
Discussion and Findings
Under paragraph 4.a. of the Policy, a Respondent is required to submit to a mandatory administrative proceeding if the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant must prove that each of these three elements is present.

Under paragraph 5 (b) (i) of the Rules, the Respondent is required to submit a Response and respond specifically to the statements and allegations contained in the Complaint. If the Respondent does not submit a Response then, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. (Rules paragraph 5 (e)).

The Respondent has not filed a Response in compliance with the Rules. The Panel is satisfied that the Respondent has notice of the Complaint as evidenced by the form of response which the Respondent filed on the online platform. There are no exceptional circumstances, and in accordance with Paragraph 14 (a) of the Rules, the Panel will proceed to a decision on the Complaint.

A. Identical or Confusingly Similar

The Complainant is the owner of numerous trade marks for NOVOTEL as evidenced by the trade mark registrations annexed to the Complaint. These include international trade mark registrations in countries which include Vietnam and the US, and Community trade mark registrations. The Complainant is the registrant of several domain names and operates a number of websites which reflect the trade mark NOVOTEL as part of the web address. It is clear that the Complaintant has rights in the trade mark NOVOTEL.

The relevant part of the disputed domain name, <novotelvietnam.com> contains the combination of the Complainant’s registered trade mark NOVOTEL plus the country name ‘Vietnam’. The addition of a geographic locator to a trade mark is a common way of indicating the geographic area in which goods and services are offered under that brand. It does not alter the underlying mark to which it is added, and does not stop the domain name being confusingly similar to the trade mark. See: Honda Motor Company Limited v LOKITA Enterprises, WIPO Case No. D2003-0507, Pepsi Co, Inc v Kieran McGarry, WIPO Case No. D2005 0629; WIPO Case D2008 -07005, ACCOR v Lee Dong Young.

The last component of the domain name is the generic top level domain ‘.com‘ suffix. It is accepted that this is not a distinguishing feature of the domain name. A top level domain suffix, such as ‘.com’, is necessary for the registration of a domain name and can be ignored when determining whether the disputed domain name is confusingly similar to the Complainant’s trade mark.

The addition of the country name ‘Vietnam’ to the Complainant’s trade mark NOVOTEL does not alter the underlying mark to which it is added.

The Panel finds that the Complainant has proved that domain name is confusingly similar to a trade mark in which the Complainant has rights, as required by paragraph 4. a. (i) of the Policy.

B. No Rights or Legitimate Interests

The Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.

The basis of the Complainant’s submissions is that the Respondent is unable to show any rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not affiliated with the Complainant and is not authorised to use its NOVOTEL trade mark or to incorporate it in a domain name.

The Respondent has not asserted any of the circumstances set out in paragraph 4. c. of the Policy to demonstrate any legitimate use, nor provided any evidence that it has:

(i) used the domain name or a name corresponding to it in connection with a bona fide offering of goods or services; or
(ii) been commonly known by the domain name; or
(iii) made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant’s trade mark ‘NOVOTEL’ is a well known hotel brand. The disputed domain name resolves to a website with what appears to be pay per click links to hotels in Vietnam.

The Respondent has not submitted any evidence to demonstrate that it has any rights or legitimate interests in the disputed domain name or that it has ever been known by that name. Based on the on the evidence before the Panel, the Respondent is using a domain name which is confusingly similar to the Complainant’s well known trade mark. This will lead inevitably to the impression that the domain name is linked to the Complainant and will divert the Complainant’s customers to the Respondent’s website for the Respondent’s commercial gain.

The Panel accepts the Complainant’s submissions and finds, in the absence of any evidence to the contrary, that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith.

Given the numerous trade mark registrations and widespread use of the mark NOVOTEL by the Complainant, it is highly improbable that the Respondent was unaware of the Complainant’s trade mark NOVOTEL when it registered the disputed domain name.

The combination of the Complainant’s trade mark NOVOTEL and the word ‘Vietnam’ makes it more, rather than less, likely that the Respondent knew of the Complainant when registering the disputed domain name: the Complainant has four NOVOTEL hotels in Vietnam and the disputed domain name points to a website containing sponsored links for other hotels in Vietnam.

The conduct of the Respondent, in combining the Complainant’s well known trade mark NOVOTEL and the word ‘Vietnam,’ and using that combination of words in a domain name directing users to a website offering sponsored links to hotels in Vietnam, can have no other explanation than to trade off the Complainant’s goodwill and reputation in the Complainant’s mark.

Whilst there may be legitimate reasons for a registrant to use a privacy shield to hide its identity, changing the name of the registrant of the domain name to ‘Domains by Proxy’ after the Complainant had sent a cease and desist letter, suggests that the Respondent was trying to obstruct the Complainant in making a Complaint.

For the reasons set out the Panel finds that the requirements of paragraph 4 a. (iii) of the Policy are satisfied and that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith.
Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
NOVOTELVIETNAM.COM Transferred to the Complainant
Panellists
Name Veronica Bailey
Date of Panel Decision 2009-02-26
Annexes
Annex: English summary of the Panel Decision
The Complainant operates hotels worldwide under the NOVOTEL brand including four hotels in Vietnam. It owns of a number of registered trade marks for NOVOTEL particularly in relation to hotels and restaurants.

The Respondent registered the domain name <novotelvietnam.com> on 2 July 2008. This domain name resolves to a website featuring sponsored links for hotels in Vietnam.

The Complainant contended that it has rights in the trade mark NOVOTEL, that the disputed domain name is confusingly similar to that mark and that the Respondent has no rights or legitimate interests in the disputed domain name which was registered and is being used in bad faith. The Respondent did not file a formal response.

The Panel found that the domain name was confusingly similar to the Complainant’s trade mark NOVOTEL and that on the evidence submitted, the Respondent had no rights or legitimate interests in the domain name. Considering the numerous trade mark registrations and widespread use of the mark, the linking of the Complainant’s trade mark NOVOTEL and the word ‘Vietnam’ and the use of the domain name for a website resolving to pay per click site for hotels in Vietnam, and the circumstances in which the Respondent used a privacy site to hide its identity, the Panel found that the domain name was registered and is being used in bad faith.

For the reasons set out in the Decision, the Complaint was accepted and the domain name<novotelvietnam.com> was transferred to the Complainant.

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