The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.
The Respondent is Chen Xian Sheng, Jiang Su Su Ning Yin He Jiu Dian Guan Li You Xian Gong Si of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2018, 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. On May 17, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 18, 2018. The Respondent did not comment on the language of the proceeding 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on June 18, 2018. 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 has been in the hospitality service for more than 45 years. It operates various levels of hotels, ranging from the economical to the luxurious. The Complainant operates more than 4,200 hotels in 95 countries, under more than 20 different brands including Fairmont, Mercure, Raffles, Sofitel, Swissotel, Pullman and Novotel. There are approximately 496 Novotel hotels in 56 countries. In China, there are 21 Novotel hotels. The Novotel Rizhao Suning hotel is located at the center of Rizhao city within Suning Plaza.
The Complainant has trade mark registrations for the NOVOTEL trade mark, including International Registration No. 542032, registered on July 26, 1989, International Registration No. 785645 (which includes a designation of China), registered on June 25, 2002, and Chinese Registration No. 10357108, registered on March 21, 2013.
The Complainant owns the domain name , which was registered on April 10, 1997.
The disputed domain name was registered on March 2, 2017. It resolves to an inactive page. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s NOVOTEL trade mark in which it has rights. The mark incorporates the Complainant’s famous NOVOTEL trade mark as well as a reference to “Rizhao” and “Suning”, which gives the wrong impression to Internet users that the disputed domain name relates to the Complainant’s Novotel Rizhao Suning hotel.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor authorized by the Complainant to register any domain name incorporating the NOVOTEL trade mark. The Respondent is not known by the name “Novotel” nor does it have prior rights or interests in the disputed domain name. The disputed domain name is so confusingly similar to the Complainant’s famous NOVOTEL mark and its Novotel Rizhao Suning hotel that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain name. The disputed domain name resolves to an inactive page, which indicates that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name.
The disputed domain name was registered and is being used in bad faith. It is not plausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is well-known throughout the world including in China where the Respondent is located. Panels in earlier UDRP decisions have found the NOVOTEL mark to be well-known (see Accor v. Adam Smith,WIPO Case No. D2016-0015 and Accor v. null,WIPO Case No. D2016-1160). The disputed domain name is so obviously connected with the well-known trade mark of the Complainant that its use by someone with no connection to the Complainant suggests opportunistic bad faith. The state of inactivity in relation to the use of the disputed domain name does not mean that the disputed domain name is used in good faith. Reproducing famous trade marks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. The Complainant noted from its checks that email servers have been configured on the disputed domain name and asserts that there might be a risk of phishing. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement in this case is Chinese. The Complainant requested that English apply as the language of the proceeding as it has no knowledge of the Chinese language. The cost of the proceeding would otherwise be very high as specialized translation services would have to be engaged by the Complainant. There would also be undue delay if translations had to be provided by the Complainant. The disputed domain name comprises Latin characters and not Chinese. Further, English is one of the working languages of the Center and is the primary language for international relations.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel agrees that requiring the Complainant to have the Complaint and annexes translated into Chinese would lead to a delay in the proceeding. The question to be addressed is, would such a delay be merited in the circumstances of this case?
The Panel notes that the disputed domain name comprises the Complainant’s well-established trade mark NOVOTEL, in combination with the name of the city of Rizhao (in Shandong Province, China) as well as the name of a commercial building in Rizhao city, Suning (Plaza). “Novotel”, “Rizhao” and “Suning” all comprise letters of the English alphabet. The Respondent’s choice of the disputed domain name reflects a familiarity with the English language and/or other non-Chinese, western languages, as well as a familiarity with the Complainant’s Novotel Hotel located in Rizhao City in China. The Respondent’s aim in registering the disputed domain name must have been to target Internet users including from the English-speaking world. The Respondent has not responded in this proceeding nor intimated that it is not familiar with English or requested that Chinese be adopted as the language of the proceeding. The Center has sent to the Respondent all communications concerning the domain name dispute in Chinese as well as in English. The Respondent could have, if it so wished, responded in Chinese.
There is nothing before the Panel which gives rise to a concern that the Respondent’s interests would be prejudiced if English were to be the language of the proceeding.
The Panel therefore concludes that it would be appropriate for English to be adopted as the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark NOVOTEL. The trade mark NOVOTEL has been incorporated in its entirety in the disputed domain name. The only difference lies in the addition of the term “rizhaosuning”, which corresponds to the names of the city and building in Shandong Province. The question to be considered is whether the addition of this term suffices in removing the confusing similarity with the Complainant’s NOVOTEL mark.
The Panel takes the view that it does not, especially since there exists a Novotel hotel in Suning Plaza in Rizhao city. Internet users looking at the disputed domain name would perceive it as a reference to the Complainant’s Novotel hotel in Rizhao city and the website (if any) to be the official website of, or to be endorsed by, the Complainant. Moreover, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”) provides that:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The addition of the names of the geographical locations in the disputed domain name therefore does not prevent a finding of confusing similarity with the Complainant’s NOVOTEL trade mark which is recognizable therein.
The first element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Regarding paragraph 4(a)(ii) of the Policy, paragraph 4(c) provides a number of “circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests in the domain name”.
In this case, the Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known by the name “Novotel” or by the terms forming the disputed domain name. Neither is there evidence of a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain name. The Panel agrees that NOVOTEL is a well-known trade mark. It is highly unlikely that the Respondent independently and by pure coincidence chose to register the disputed domain name. The Respondent has failed to discharge its burden of proving that it has rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith
It is clear per section 3.3 of the WIPO Overview 3.0 that the general consensus amongst UDRP panels that “the non-use of a domain name ... would not prevent a finding of bad faith under the doctrine of passive holding”. Factors that are considered as relevant in applying the passive holding doctrine include:
“(i) the degree of distinctiveness or reputation of the complainant’s mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
(iv) the implausibility of any good faith use to which the domain name may be put.”
Applying these factors and considering the circumstances of this case, including the fact that the disputed domain name comprises the well-known NOVOTEL trade mark and a specific reference to a building and geographical location where one of the Complainant’s Novotel hotels is situated, the Panel finds that there has been bad faith registration and use, albeit there has been passive holding of the disputed domain name. The Panel agrees, in the absence of any rebuttal argument and evidence from the Respondent, that the disputed domain name is so obviously connected with the Complainant’s well-known NOVOTEL trade mark that its use by someone with no connection to the Complainant suggests opportunistic bad faith. It is indeed difficult to contemplate good faith use of the disputed domain name. The Panel further notes that the contact details provided by the Respondent appear to have been false as delivery of correspondence to the Respondent by courier from the Center could not be made.
In the absence of any response from the Respondent, the Panel accordingly finds that the third element of paragraph 4(a) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: June 25, 2018
Full & Egal Universal Law Academy