Complainant is Accor of Evry, France, represented by Dreyfus & associés, France.
Respondent is Jiangdeyun of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2011. On December 28, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On December 29, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 4, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on February 1, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 8, 2012. 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.
Complainant requested cancellation of the disputed domain name. 4. Factual Background
Complainant operates hotels in multiple countries worldwide under various trademarks including the trademark NOVOTEL. Complainant’s service mark NOVOTEL is used as a hotel name in multiple locations including one in Beijing, China which operates under the name “Novotel Beijing Peace”. Complainant owns the domain name and has provided evidence of ownership of multiple trademark registrations incorporating NOVOTEL including International Registration Nos. 785645 and 875041 for NOVOTEL which designate China and were granted on June 25, 2002 and December 9, 2005, respectively. Registration No. 785645 is for the NOVOTEL word mark, while Registration No. 875041 is for a figurative mark featuring NOVOTEL ACCOR HOTELS.
Respondent is identified as Jiangdeyun of Beijing, China. The record indicates that no communications have been sent by or on behalf of Respondent.
The disputed domain name was created on January 22, 2011.
Complainant sent a cease and desist letter to Respondent on March 28, 2011 and sent reminder letters regarding this communication on April 22, 2011 and April 28, 2011. No responses to these letters were received. 5. Parties’ Contentions A. Complainant
Complainant has taken issue with the disputed domain name because it incorporates its NOVOTEL trademark and is confusingly similar to the trade name for one of its hotel properties in Beijing, namely the “Hotel Novotel Beijing Peace”. Complainant further notes that the addition of the terms “Beijing” and “Peace” to its NOVOTEL trademark to create the disputed domain name does not add distinction because these are geographic and generic terms, respectively.
Complainant claims to operate over 4,200 hotels in 90 countries worldwide including China, Respondent’s country of residence. Complainant has cited multiple prior cases which recognize its NOVOTEL mark as well-known including ACCOR v. Jose Andres Buenfil Gomez,WIPO Case No. D2008-1248 and ACCOR v. Sergey Fomin,WIPO Case No. D2008-0706.
Complainant maintains that Respondent is not affiliated with Complainant and has not been authorized to use its trademark or seek registration of a domain name which incorporates its NOVOTEL trademark. Complainant alleges that there is no evidence that Respondent is known by the name “Novotel” and that Respondent has not been licensed or authorized to use the trademark. Regarding bad faith registration, Complainant cites multiple prior cases which have recognized its NOVOTEL trademark as well-known and maintains that registration of the disputed domain name must be found as registration made in bad faith due to its incorporation of the NOVOTEL trademark. Complainant also cites its “Hotel Novotel Beijing Peace” property as evidence that Respondent should have been aware of Complainant when registering the disputed domain name . Regarding bad faith use, Complainant has provided screens taken from the website featured at the disputed domain name which display photos of hotels, feature a logo incorporating “Novotel Hotels”, and a copyright notice reading “© Novotel Peace Beijing”. Complainant maintains that these elements will cause consumers to mistakenly believe that the disputed domain name is owned or used by Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.
The content featured on the disputed domain name is displayed in both the English and Chinese languages. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay. B. Identical or Confusingly Similar
Complainant owns trademark rights in NOVOTEL which were granted in China prior to the creation of the disputed domain name . The disputed domain name is confusingly similar to the NOVOTEL trademark in which Complainant has rights because it includes Complainant’s NOVOTEL trademark in its entirety. It has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of confusing similarity. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark ‘Xerox’. This is sufficient to justify the finding that the name is ‘confusingly similar’ to the Complainant’s registered trademarks”).
The incorporation of the terms “peace” and “beijing” do not add distinction. As observed in Accor, SoLuxury HMC v. Jim Green,WIPO Case No. D2011-1773, a case decided in favor of Complainant which involved the similarly composed domain name , use of the term “peace” and “Beijing” with the NOVOTEL trademark to form a domain name does not “sufficiently diminish the confusing similarity” between the domain name and the NOVOTEL trademark. The Panel notes that there is nothing in the present record to support a different conclusion. Moreover, it is well-established that the incorporation of a city name such as Beijing into a domain name which contains a third party trademark does not add distinction, especially when that third party trademark is used in connection with hotels (See, e.g., Donald J. Trump v. Web-adviso,WIPO Case No. D2010-2220 and Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc.,WIPO Case No. D2010-1064).
Furthermore, prior UDRP panels have recognized Complainant’s NOVOTEL trademark as well-known or famous. Examples include Accor S.A. v. Peter Mason, WIPO Case No. D2008-0957 (noting that the lack of a response to complaint involving a famous trademark “makes it difficult for a panel not to find in a complainant’s favor” when concluding that respondent had no rights or legitimate interests in ), ACCOR v. Tara Rossi,WIPO Case No. D2006-0360 (observing that the use of the “well-known trademark NOVOTEL” and the terms ‘centre’ and ‘hotel’ was indicative of bad faith registration in finding for the complainant), and Accor v. Sergey Fomin, supra. (“The Panel acknowledges (the NOVOTEL) trademark as widely-known”). Use of Complainant’s NOVOTEL trademark to compose a domain name is sufficient ground for finding that the domain name is likely to be confused with the trademark at issue. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (“Long-established precedent has generally recognized confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the NOVOTEL trademark in which Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “Novotel” or “Novotel Peace Beijing”. Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith given the unlikelihood that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of Complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, supra (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s PORSCHE trademark when registering ). Given that the NOVOTEL trademark has been recognized as famous or well-known, Complainant’s prior registered rights in the trademark, and Complainant’s operation of hotel properties under this trademark in Respondent’s home country of China, it is difficult to believe that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name . Any doubts in favor of good faith registration cannot be justified due to Respondent’s lack of communication in connection with this matter and Complainant’s operation of a hotel property in Respondent’s home city under the name “Novotel Beijing Peace”.
It is clear that the disputed domain name has been registered and used in an effort to create consumer confusion between the disputed domain name and Complainant’s NOVOTEL trademark. The content suggests that the disputed domain name is operated by, endorsed by, sponsored by, or affiliated with Complainant. This supports a finding of bad faith. Specifically, the record shows that webpages have been featured on the disputed domain name which features Complainant’s NOVOTEL trademarks, a photo of a hotel featuring Complainant’s NOVOTEL trademark, and a copyright line which reads “Copyright © Novotel Peace Beijing. All Rights Reserved”. Moreover, it has been noted in prior UDRP decisions that NOVOTEL is a well-known trademark. It is well established that the use of a well-known trademark in a domain name is likely to cause consumer confusion because Internet users are likely to believe that the content is owned by, sponsored by, affiliated with, or endorsed by the trademark owner. See, e.g., Diageo Ireland, Arthur Guinness Son & Co. (Dublin) Limited v. The Director,WIPO Case No. D2003-0885 (acknowledging the well-known status of the complainant’s trademark and finding that the respondent’s use of a domain name incorporating this mark was an attempt to attract Internet users to the website featured at the domain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website by the complainant) and DreamWorks L.L.C. v. Andy Xu,WIPO Case No. D2004-0667 (finding that the use of a domain name incorporating a well-known trademark to advertise services identical to those provided under the well-known trademark at issue supported a finding of bad faith use because respondent was trying to “convey the misleading impression” that it was connected to the complainant). Continued use of the disputed domain name contributes to the risk that consumers will mistakenly believe that the content featured on the website at the disputed domain name is sponsored by, endorsed by, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s domain names.
Accordingly, the Panel finds that the disputed domain name has been registered and 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 be cancelled as requested by Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: February 24, 2012
Full & Egal Universal Law Academy