The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is null of Busan, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
On June 13, 2016, the Center notified the parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On June 14, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Korean, and the proceedings commenced on June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2016.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on August 5, 2016. 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 Complainant was founded in 1967, and operates more than 3,900 hotels in 92 countries worldwide under different brands such as SOFITEL, PULLMAN, NOVOTEL, MERCURE and IBIS. The Complainant began to use the brand NOVOTEL for international midscale brand for business and leisure travelers. Novotel owns four hotels in the Republic of Korea.
The Complainant is in particular the owner of the following trademark registrations:
- Korean trademark NOVOTEL HOTELS in combination with a device Registration No. 4102640710000 registered on July 16, 2013, covering services in class 43;
- International trademark NOVOTEL Registration No. 785645 registered on June 25, 2002, covering services in class 43 and duly renewed; and
- International trademark NOVOTEL Registration No. 542032 registered on July 26, 1989, covering services in class 42 and duly renewed.
The disputed domain name was registered on January 15, 2016. 5. Parties’ Contentions A. Complainant
i) The Complainant is the owner of the following trademark registrations: a) Korean trademark NOVOTEL HOTEL with a device Registration No. 4102640710000 registered on July 16, 2013, covering services in class 43; b) International trademark NOVOTEL Registration No. 785645 registered on June 25, 2002, covering services in class 43 and duly renewed; and c) International trademark NOVOTEL Registration No. 542032 registered on July 26, 1989, covering services in class 42 and duly renewed. The disputed domain name reproduces entirely the Complainant’s trademark NOVOTEL which previous UDRP panels have considered to be “well-known” or “famous”.
ii) The Respondent has no rights or legitimate interests in the disputed domain name for the reasons: a) the registrations of the trademark NOVOTEL preceded the registration of the disputed domain name for years; b) the disputed domain name is so similar to the famous trademark of the Complainant that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name; c) the Respondent is not commonly known by the name “Novotel”, in any way affiliated with the Complainant, nor authorized or licensed to use the trademark NOVOTEL, or to seek registration of any domain name incorporating said mark; d) the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a Korean hotel online booking website relating to three Novotel hotels in the Republic of Korea reproducing the Complainant’s Novotel logo as well as photos of the abovementioned hotels and services offered by the Complainant; e) a legitimate noncommercial or fair use of the disputed domain name as per paragraph 4(c)(iii) of the Policy cannot be inferred due to the Respondent’s clear intention for commercial gain. The presentation of the litigious website may lead potential Novotel customers to book hotel rooms on the Respondent’s website believing it to be the Complainant’s official website; and f) it seems that the Respondent registered the disputed domain name while not revealing its identity and preventing the Complainant from contacting it.
iii) The disputed domain name was registered in bad faith on the grounds that a) in light of the reputation of the Complainant’s trademark, the Respondent’s reproduction of the trademark NOVOTEL in its entirety in the disputed domain name and its association to the generic term “tour” making reference to the Complainant’s field of activity clearly prove that the Respondent was aware of the existence of the Complainant’s trademark; and b) a quick trademark search on “NOVOTEL” would have revealed to the Respondent the existence of the Complainant and its trademark. Many Internet users attempting to visit the Complainant’s official website have ended up on the web page set up by the Respondent. The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name resolves to a Korean hotel online booking website relating to three Novotel hotels in the Republic of Korea reproducing the Complainant’s Novotel logo as well as photos of the abovementioned hotels and services offered by the Complainant. The Respondent is taking undue advantage of the Complainant’s trademark to generate profits, and the use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Language of Proceedings
The Panel notes that the Center notified the parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. The Complainant requested for English to be the language of the proceedings. The Complainant contends that:
i) the Registrar’s website displays its information in Korean. Nevertheless, as indicated by the panel in the decision, KERING v. Ren Xiang, HK KERING INC.LTD / YinSi BaoHu Yi KaiQi, WIPO Case No. D2014-1878, the following should be taken into consideration upon deciding on the language of proceedings: (a) the disputed domain name consists of Latin letters, rather than Korean letters; (b) the Complainant is not fluent in the Korean language;
ii) the Complainant is located in France and has no knowledge of Korean. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Consequently, the use of another language than English in the proceedings would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings; and
iii) in many relevant UDRP decisions, the panel decided that since the complainant was unable to communicate in the language of the registration agreement, the proceedings would inevitably be delayed unduly, and the complainant would have to incur substantial expenses if the complainant was to submit all documents in said language (Solvay SA v. Hyun-Jun Shin, WIPO Case No. D2006-0593). Moreover, today English is the primary language for international relations and it is one of the working languages of the Center. In view of all the above-mentioned arguments and evidence, the Complainant requests that the language of the present proceedings be English.
Noting that the Center formally notified the Respondent of the Complaint and the Complainant’s Request for English to be the language of the proceedings in both Korean and English, in the absence of the Respondent’s reply to the Complaint and Request for the language of the proceedings and given the circumstances that the Complainant would be unfairly disadvantaged by being forced to translate the Complaint, the Panel determines that English is the language of the proceedings under paragraph 11 of the Rules.
Paragraph 15(a) of the Rules instructs the Panel to decide “a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name 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 disputed domain name has been registered and is being used in bad faith.
The Respondent provided no Response. Accordingly, the Respondent is in default. Taking into consideration of the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three elements of paragraph 4(a) of the Policy. B. Identical or Confusingly Similar
The Complainant contends that it is the owner of the following trademark registrations: i) Korean trademark NOVOTEL HOTEL with a device Registration No. 4102640710000 registered on July 16, 2013, covering services in class 43; ii) International trademark NOVOTEL Registration No. 785645 registered on June 25, 2002, covering services in class 43; and iii) International trademark NOVOTEL Registration No. 542032 registered on July 26, 1989, covering services in class 42.
The Panel finds that the Complainant’s Korean trademark registration and international trademark registrations above suffice to demonstrate the Complainant’s rights in its mark for the purposes of Policy. Accordingly, the Panel finds that the Complainant has demonstrated its rights in its mark pursuant to Policy, paragraph 4(a)(i).
The Complainant asserts that the disputed domain name reproduces entirely the Complainant’s trademark NOVOTEL which previous UDRP panels have considered to be “well-known” or “famous”. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark NOVOTEL, in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel finds that the additional word “tour” is a descriptive word especially in relation to hotel and resort services, and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the word “tour” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager,WIPO Case No. D2011-2197 finding “the additional word ‘help’ is an expression commonly used in the world to provide assistance.” For these reasons, the Panel finds that the word “tour” is solely descriptive. The use of the added descriptive word does not change the overall impression of the disputed domain name as being dominated by the term (“novotel”) and does not serve to distinguish the disputed domain name from the Complainant’s mark.
The addition of the Top-Level Domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name as well.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. C. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of production will then shift to the respondent to rebut the same. If the respondent fails to do so, the complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Complainant submits that: i) the registrations of the trademark NOVOTEL preceded the registration of the disputed domain name for years; ii) the disputed domain name is so similar to the famous trademark of the Complainant that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name; iii) the Respondent is not commonly known by the name “Novotel”, in any way affiliated with the Complainant, nor authorized or licensed to use the trademark NOVOTEL, or to seek registration of any domain name incorporating said mark; iv) the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a Korean hotel online booking website relating to three Novotel hotels in the Republic of Korea, namely Hotel Novotel Ambassador Seoul Gangnam, Hotel Novotel Ambassador Seoul Doksan and Hotel Novotel Ambassador Busan reproducing the Complainant’s Novotel logo as well as photos of the abovementioned hotels and services offered by the Complainant; v) a legitimate noncommercial or fair use of the disputed domain name as per paragraph 4(c)(iii) of the Policy cannot be inferred due to the Respondent’s clear intention for commercial gain. The presentation of the litigious website may lead potential Novotel customers to book hotel rooms on the Respondent’s website believing it to be the Complainant’s official website; and vi) it seems that the Respondent registered the disputed domain name while not revealing its identity and preventing the Complainant from contacting it.
In light of the Complainant’s assertions above along with their supporting evidence, the Panel finds that the Complainant has established a prima facie case. In the absence of the Respondent’s response to the Complainant’s allegations, the Panel finds that the Complainant has satisfied its burden that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered in bad faith on the grounds that i) in light of the reputation of the Complainant’s trademark, the Respondent’s reproduction of the trademark NOVOTEL in its entirety in the disputed domain name and its association to the generic term “tour” making reference to the Complainant’s field of activity clearly prove that the Respondent was aware of the existence of the Complainant’s trademark; and ii) a quick trademark search on “NOVOTEL” would have revealed to the Respondent the existence of the Complainant and its trademark.
The Panel infers, due to the notoriety of the Complainant’s trademark NOVOTEL and the manner of use of the disputed domain name by the Respondent, i.e., resolving to a Korean hotel online booking website relating to three Novotel hotels in the Republic of Korea that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name. As such, the Panel finds that the disputed domain name was registered in bad faith. See Compagnie Générale des Etablissements Michelin vs Trendimg,WIPO Case No. D2010-0484 finding “Given the fame of Complainant’s MICHELIN marks, the panel concludes that Respondent had actual knowledge of Complainant’s trademarks.” See also Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; NBC Universal Inc. v. S,WIPO Case No. D2007-0077; and Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287.
The Complainant contends that many Internet users attempting to visit the Complainant’s official website have ended up on the web page set up by the Respondent and that the disputed domain name is confusingly similar to the Complainant’s trademark. The Panel agrees that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site which constitutes bad faith use of the disputed domain name. See MasterCard International Incorporated v. Wavepass AS,WIPO Case No. D2012-1765 (finding that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site”); E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095; and L’orealSA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd,WIPO Case No. D2010-1318.
The Complainant also contends that the disputed domain name resolves to a Korean hotel online booking website relating to three Novotel hotels in the Republic of Korea, namely Hotel Novotel Ambassador Seoul Gangnam, Hotel Novotel Ambassador Seoul Doksan and Hotel Novotel Ambassador Busan reproducing the Complainant’s Novotel logo as well as photos of the abovementioned hotels and services offered by the Complainant leading customers to believe that the Respondent’s website is the Complainant’s official website, and thus the Respondent is taking undue advantage of the Complainant’s trademark to generate profits, and the use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to Policy, paragraph 4(b)(iv).
Taking into account all of the above, and without any explanation from the Respondent, the Panel concludes that the disputed domain name was registered and used in bad faith under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name 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 transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: August 15, 2016
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