The Complainant is ACCOR of Evry, France, represented by Dreyfus & associés, France.
The Respondent is Vu Duy Truong, N/A, of Quang Ninh, Vietnam. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 17, 2011. On January 17, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On January 18, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), 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 January 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2011.
The Center appointed William L. LaFuze as the sole panelist in this matter on February 17, 2011. 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 following facts, taken from the Complaint, are uncontested:
The Complainant is the European leader and one of the world’s largest business organizations in travel, tourism and corporate services. The Complainant owns more than 4,000 hotels in 90 countries worldwide, and in 2009 employed 170,000 people; in Vietnam alone the Complainant operates 13 hotels. Novotel is one of the Complainant’s chains of hotels.
The Complainant owns the following international NOVOTEL trademarks designating Vietnam, which are very well known in the hotel and restaurant industries:
NOVOTEL, International Trademark No. 542032, dated of July 26, 1989 duly renewed and covering services in Class 42;
Novotel, International Trademark No. 767863, dated of August 21, 2001 duly renewed and covering services in Class 38;
The Complainant also owns and uses , registered on April 10, 1997, in order to provide Internet users with a quick and easy way of finding and booking hotels that belong specifically to its Novotel chain.
The disputed domain name was registered on March 11, 2010. 5. Parties’ Contentions A. Complainant
In addition to the above mentioned the Complainant states that the Novotel Hotels mainly communicates online via its website “www.” in order to allow the Internet users a quick and easy finding and booking of its hotels.
The Complainant sent a cease-and-desist letter requesting amicably the transfer of the disputed domain name , based on its trademark rights. The Respondent replied by requesting USD 20,000 in exchange for the transfer of the disputed domain name.
In view of the above the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
a) The disputed domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights
The Complainant claims that the “.com” portion of the domain name must be ignored when assessing the identity of a mark or domain name and that confusing similarity is determined by comparing the mark at issue with the domain name. It also claims that the addition of a geographic denomination such as “halong”, is not sufficient to avoid confusion, especially when added to a well-known trademark.
The Complainant asserts that given the above, there can be no doubt that the Respondent’s unauthorized use of the coupling of these two words “Novotel” and “Halong” creates a likelihood of confusion, since Internet users may think that the disputed domain name is related to the Complainant’s services. Consequently the disputed domain name is confusingly similar to the NOVOTEL trademark.
b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent is not affiliated with the Complainant in any way. It has not authorized the Respondent to use nor register its trademarks or to seek the registration of any domain names incorporating said trademarks.
The Complainant also asserts that the Respondent makes no legitimate noncommercial or fair use of the domain name, since the disputed domain name initially was inactive, and after receiving the cease-and-desist letter, the disputed domain name was directed to the company Best Cruises Co., Ltd.’s website, a tour operator specializing in cruises and personal travel services in Vietnam.
Lastly, the Complainant asserts that the Respondent did not rebut the allegations set forth by the Complainant and has not provided the Panel with any explanation as to whether there are indeed legitimate reasons for its choice of the disputed domain name.
Therefore, the Respondent has no rights and legitimate interests in the disputed domain name.
c) The disputed domain name was registered and used in bad faith.
The Complainant claims that it would be difficult to believe that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name given the very precise combination respectively of the trademark NOVOTEL and the geographic term “halong”.
The Complainant also claims that in light of the use of this disputed domain name and the lack of response from the Respondent, the Respondent most likely registered the domain name in bad faith and was perfectly aware that it was infringing the Complainant’s rights. Bad faith was furthered evidenced by the Respondent requesting USD 20,000 in exchange for the transfer (informal email from Respondent on January 17, 2011). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrates that (i) it has trademark rights and (ii) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
(i) The Panel finds that the Complainant has established that it is the owner of the registered trademark NOVOTEL based on the uncontested allegations provided by the Complainant.
(ii) The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark NOVOTEL and other of a geographic term “halong”.
The Panel considers that the addition of the geographic denomination, especially when added to a registered trademark, is not sufficient to avoid confusingly similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent inter alia does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden of production is shifted to the Respondent to prove the contrary.
The Complainant states that the disputed domain name was initially inactive and later directed to a third party website. The Complainant asserts that the Respondent is not affiliated with the Complainant in any way nor has it authorized the Respondent to use or register its trademarks or to seek the registration of any domain names incorporating said trademarks. The Complainant finally claims that the Respondent makes no legitimate noncommercial or fair use of the domain name and therefore has no rights or legitimate interests in the domain name.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the domain name.
In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element of paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that the domain name has been registered in bad faith and is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of two words, “Novotel” and “halong”. The first is a registered trademark owned by the Complainant; the second is a geographic term. Halong is a city in Vietnam.
The Complainant states that a Novotel hotel exists in the city of Halong. The Respondent resides in Vietnam. Consequently, it is difficult to believe that the juxtaposition of these two terms is a mere coincidence, taking into consideration that the Respondent has its address in Vietnam. Therefore one can reasonably conclude that the Respondent had knowledge of the existence of the Halong Novotel hotel and of the Complainant’s trademark, demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to him since the day the Complainant’s counsel contacted the Respondent and informed him of the Complainant’s prior rights. Therefore, all use after such notification suggests use of the disputed domain name in bad faith. In this Panel’s opinion this is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant.
Moreover, the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the domain name and the cease of use of the trademark. The Respondent has not removed such mention and remains using the trademark of the Complainant, in circumstances in which the Complainant has clearly stated that it has never given the Respondent authorization to use such trademark. Moreover, the Respondent replied by requesting USD 20,000 for the transfer of the disputed domain name. This sum is obviously well in excess of any conceivable out-of-pocket costs directly related to the registration of the disputed domain name. This conduct of Respondent further supports a finding of bad faith on its behalf.
Therefore, in accordance with paragraph 4(b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and used 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, be cancelled.
William L. LaFuze
Sole Panelist
Dated: March 3, 2011
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