Complainant is Accor of Issy-Les-Moulineaux, France, represented Dreyfus & Associés, France.
Respondent is Mosayeb Namvar of Teheran, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 21, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 23, 2017, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on December 26, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 5, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2018. On January 26, 2018, the Center notified Respondent’s default.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on February 9, 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
Complainant is a company registered in France and founded in 1967. It operates more than 4,100 hotels in 95 countries, under more than 20 different brands including Raffles, Sofitel, OneFineStay, Fairmont, MGallery, Pullman, Swissotel, Grand Mercure, Novotel, Mama Shelter, Mercure and IBIS “Complainant’s Brands”).
Novotel is the historic brand of Complainant, with 485 Novotel hotels in 58 countries.
In October 2015, Accor opened two hotels in Iran where Respondent resides. One hotel operates under the brand NOVOTEL. It was the first international hotel group to operate in Iran.
Complainant is also the registered owner of the following NOVOTEL trademarks (“Complainant’s Trademark”), among others:
- Iranian trademark NOVOTEL, No. 74563, registered on December 29, 1994; and
- European Union trademark NOVOTEL, No. 010429082, registered on April 20, 2012.
Complainant is also the owner of domain names name reflecting its trademarks for the promotion of its services, including , which was registered on April 10, 1997.
The Domain Name was registered on September 16, 2015 and resolves to a website with the text “New Tel Space ComingSoon Under Construction”. 5. Parties’ Contentions A. Complainant
Complainant states that Complainant’s Brands offer hotel stays tailored to the specific needs of business and leisure customers and are recognized and appreciated around the world for their quality of service.
Complainant advises that when it became aware of the registration of the Domain Name, and before starting these proceedings, it made efforts to resolve the matter with Respondent amicably. On June 10, 2016, it sent a cease-and-desist letter to Respondent requesting that Respondent transfer the Domain Name to Complainant free of charge. On June 20, 2016 a reminder letter was also sent to Respondent.
Complainant further advises that Respondent replied on June 21, 2016 stating that the Domain Name had “nothing to do with your desired name”, that he had no intention to “exploit” the NOVOTEL trademarks, that Novotel’s meaning in Persian would be different from the meaning associated with Complainant’s Trademarks as “novo” would mean “new” and “tell” would mean “smartphone”.
Complainant’s representatives sent a reply on October 19, 2016, outlining that Respondent had no rights or legitimate interests in the Domain Name as Complainant had not granted Respondent any authorization to use Complainant’s Trademark in the Domain Name.
Complainant states that Respondent replied: “I can no longer convince you But I am sure our business has nothing to do with your business And our site does not have anything to do with your brand (NovotelHotel) but Negotiable”.
Complainant contends that the Domain Name reproduces Complainant’s Trademark in its entirety, with the addition of the descriptive word “hotel”, which reflects Complainant’s field of activity, which increases the risk of confusion as Internet users might wrongly believe that the Domain Name is associated with Complainant or endorsed by Complainant and its hotel in Iran.
Complainant states it has used Complainant’s Trademark in connection with a wide variety of services around the world, and claims that as a consequence the public perceives the services offered under this trademark as being those of Complainant. Therefore, the public would reasonably assume that the Domain Name would be owned by Complainant or at least assume that it is related to Complainant, and accordingly, by registering the Domain Name Respondent has created a likelihood of confusion with Complainant’s Trademark.
Complainant advises that Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register Complainant’s Trademark. Further, Complainant points out that Respondent is not commonly known by the name “Novotel”.
Complainant notes that the registration of Complainant’s Trademark has been registered prior to the registration of the Domain Name.
Complainant contends that the Domain Name leads to an inactive/under construction page containing a countdown to its launching. Complainant further contends that Respondent has not made any reasonable and demonstrable preparations to use the Domain Name in connection to a bona fide offering of goods or services, nor is he commonly known by the name “Novotel”. Consequently Complainant argues, Respondent has failed to show any intention of noncommercial or fair use of the Domain Name.
Complainant claims that it is well-known world-wide, including Iran where Respondent resides, especially as Accor was the first international hotel group to operate in Iran when the country’s economic sanctions started to ease and claims that Respondent would or should have been aware of Complainant when he registered the Domain Name. B. Respondent
Respondent did not respond to the Complaint or Complainant’s submissions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Trademark has been used and registered (significantly, in terms of an Iranian respondent, Iranian trademark “NOVOTEL”, No. 74563, registered on December 29, 1994) and since October 2015 operated a hotel in Iran under Complainant’s Trademark.
Complainant contends that the Domain Name reproduces Complainant’s Trademark in its entirety, with the addition of the descriptive word “hotel”.
There is clear merit in these submissions and in the absence of any attempt to refute them it is found that:
a) Complainant has rights in respect of Complainant’s Trademark.
b) The Domain Name is not identical to but for the reasons set out above confusingly similar to Complainant’s Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
Respondent indicated in correspondence to Complainant that it had no desire to use the Domain Name but that in Persian NOVOTEL has a different meaning – “novo” means “new” and “tell” would mean “smartphone”. While this argument is novel there is no evidence to suggest that Respondent is involved in any way in the telephone or smartphone industry. Indeed, it seems that at least one purpose for registering and passively holding the Domain Name is to sell it to Complainant. The reference to Respondent being “Negotiable” illustrates this.
The Panel infers that Respondent lacks rights or legitimate interests in the Domain Name and that it was registered, at least in part, for purposes of resale to Complainant at an amount in excess of the registration cost of the Domain Name. Such conduct has been found by numerous panels to not be legitimate.
On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered or Used in Bad Faith
Given Complainant’s long-standing use and registration of Complainant’s Trademark, the Panel infers that Respondent knew of Complainant’s Trademark when registering the Domain Name.
The Panel concludes that Respondent has registered and used the Domain Name for purpose of making a commercial gain, through the resale of the Domain Name, preferably back to Complainant.
The Panel thus finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Trademark, at the time of registration of the Domain Name and since. Indeed, the Domain Name consists of Complainant’s Trademark and the word “hotel”, which accords entirely with Complainant’s field of interest. Internet users might wrongly believe that the Domain Name is associated with Complainant or endorsed by Complainant and its hotel in Iran.
The current website to which the Domain Name resolves, indicating a “New Tel Space” is “ComingSoon” and/or “Under Construction” also does not prevent a finding of use in bad faith.
The Panel thus finds that the third limb of the Policy has been met. 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 Domain Name be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: February 22, 2018
Full & Egal Universal Law Academy