The Complainant is ACCOR of Paris, France, represented by Dreyfus & Associés, France.
The Respondent is Domain ID Shield Service Co., Limited / Mr. Sakol Yoowiwat of Hong Kong, China and Bangkok, Thailand, respectively.
The disputed domain names <grandmercureparkavenue.com>, <novotelbangkoksiamsquare.com>, <novotellotushotelbangkok.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2012. On the same date, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain names. On January 9, 2012, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2012.
The Center verified that the Complaint together with the amended 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2012.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on February 24, 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.
The Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services.
The Complainant operates more than 4,200 hotels in 90 countries. The Complainant operates a number of hotel chains including “Pullman”, “Novotel”, “Mecure” and “Ibis”.
The Complainant operates 50 hotels in Thailand, including 11 Novotel hotels, 5 Mercure hotels and 5 hotels without brand.
The Complainant is the holder, among others, of the following domain names: <accorhotels.com>, <grandmercure.com>, <pullmanhotels.com>, <accor.com> and <novotel.com>. Among the Complainant’s hotels located in Thailand, and more specifically in Bangkok, one of the hotels Novotel, one of the hotels Mercure and one of hotels without brand are respectively: Novotel Bangkok on Siam Square, Grand Mercure Bangkok Park Avenue and Bangkok Hotel Lotus Sukhumvit.
On July 23, 2009, the Complainant sent a cease and desist letter to the Respondent regarding the use of the disputed domain names <grandmercureparkavenue.com>, <novotelbangkoksiamsquare.com>, <novotellotushotelbangkok.com>. From July 30, 2009 to August 13, 2009, the Complainant sent reminders to the Respondent regarding the referred cease and desist letter.
The Respondent modified its contact information after receiving the cease and desist letter and reminders thereof, changing from Sakol Yoowiwat to Domain ID Shield Service Co. Limited.
The Complainant has registered the well-known trademarks NOVOTEL, GRAND MERCURE and M GRAND MERCURE in several countries.
The disputed domain names were registered in:
|
Disputed domain name |
Registration Date |
|
<grandmercureparkavenue.com> |
June 1, 2009 |
|
<novotelbangkoksiamsquare.com> |
June 1, 2009 |
|
<novotellotushotelbangkok.com> |
June 1, 2009 |
The Complainant makes the following contentions:
(i) that the disputed domain names are identical and/or confusingly similar to either the Complainants’ NOVOTEL trademark or the Complainant’s MERCURE trademark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Complainant also sets forth that despite the addition of the words “hotel”, “lotus” and the geographical terms “bangkok”, “park avenue” and “siam square” the disputed domain names incorporate the Complainant´s trademarks in their entirety and, consequently, are confusingly similar to those trademarks and that Internet users could come to believe that the disputed domain names <grandmercureparkavenue.com>, <novotelbangkoksiamsquare.com>, <novotellotushotelbangkok.com> belong to the Complainant.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names since the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use the Complainant’s trademarks, or to register a domain name incorporating the Complainant’s trademarks. The Respondent is not commonly known by the names “mercure” or “novotel”.
Moreover, prior to receiving any notice of the dispute from the Complainant, the Respondent did not demonstrate any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. This is because the Complainant´s trademarks are well-known. Secondly, the Respondent registered three (3) domain names, all incorporating at least one of the Complainant´s trademarks. This cannot be a coincidence. Finally, should the Respondent had conducted any search for the words “novotel” or “mercure” using a search engine prior to registration, he would have been aware of the existence of the Complainant. Therefore the disputed domain names were registered in bad faith.
By clicking on the “Online Reservation” and then “Book Now” button of the websites to which the disputed domain names resolves, the Internet user is redirected to the website “www.hotel2thailand.com” which offers a booking system with an intent of commercial gain to misleadingly divert consumers from Complainant´s website.
The Respondent did not reply to the Complainant’s contentions.
To satisfy paragraph 4(a)(i) of the Policy the Complainant must have trade or service mark rights, and the disputed domain names must be identical or confusingly similar to the Complainant’s trademarks.
The Complainant is the owner of the MERCURE trademark, having registrations for MERCURE trademark throughout the world. The MERCURE trademark is also a well-known mark, as confirmed in previous UDRP decisions. See ACCOR v. Dr. Gregor Moll, WIPO Case No. D2005-0463.
The Complainant is the owner of the NOVOTEL trademark having registrations for NOVOTEL trademark throughout the world. The NOVOTEL trademark is also a well-known mark , as confirmed in previous UDRP decisions. See Accor v. Serdar Ceylan, WIPO Case No. D2011-2231.
Past UDRP decisions have found that a domain name that consists of a complainant’s trademark and a geographical term is confusingly similar to that complainant’s trademark. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ACCOR v. Vu Duy Truong, N/A, WIPO Case No. D2011-0093. This is because the mere addition of a geographical term is not sufficient to provide any distinctiveness to a disputed domain name. Therefore, the Panel finds that the following two of the three disputed domain names, <grandmercureparkavenue.com> and <novotelbangkoksiamsquare.com>, are confusingly similar to the Complainant´s trademarks as they reproduce the MERCURE trademark or the NOVOTEL trademark and add geographical terms.
In line with the above, past UDRP decisions have also found that a domain name that consists of a complainant’s trademark and a descriptive term is confusingly similar to that complainant’s trademark. See 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. Therefore, the Panel finds that, in addition to that set forth in the preceding paragraph, the third disputed domain name, <novotellotushotelbangkok.com>, is also confusingly similar to the Complainant´s trademark as it reproduces the NOVOTEL trademark and adds descriptive terms such as “lotus” and “hotels”, as well as geographical terms.
To succeed on this element, a complainant must make out a prima facie case that a respondent lacks rights or interests in a disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the disputed domain name. In this case, the Respondent did not reply to the Complainant´s contentions.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to register or use the disputed domain names or to seek the registration of any domain name incorporating the MERCURE trademark or the NOVOTEL trademark. There is no evidence that the Respondent is commonly known by the disputed domain names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Complainant has established a prima facie case that the Respondent lacks rights or interests in the disputed domain names.
The Respondent did not reply to Complainant´s contentions and consequently has failed to provide any evidence of rights and legitimate interests in the disputed domain names.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraph 4(a)(ii) of the Policy.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is the owner of the trademarks or service marks, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain names; or
(ii) The Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the trademark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Respondent registered the disputed domain names <grandmercureparkavenue.com>, <novotelbangkoksiamsquare.com>, <novotellotushotelbangkok.com> on June 1, 2009.
Collectively, these three disputed domain names incorporate both the NOVOTEL trademark and the MERCURE trademark. It is implausible to this Panel that an individual, who was unaware of the Complainant, could have registered three domain names that incorporate two dissimilar hotel brands owned by the Complainant by accident. Secondly, these three disputed domain names incorporate the descriptive terms “lotus” and “hotel”. The term “hotel” describes the services offered by the Complainant under their NOVOTEL and MERCURE hotel trademarks. Finally, the reputation of the Complainant internationally makes it implausible to this Panel that the Respondent was unaware of either the NOVOTEL or MERCURE trademark at the time he registered these three disputed domain names.
The registration of the disputed domain names in awareness of the Complainant´s trademarks and in the absence of rights or legitimate interests amounts to registration in bad faith. Furthermore, the Panel finds that the Respondent, by registering three separate domain names that contain the Complainant’s trademarks, was engaged in a pattern of conduct to prevent the Complainants from reflecting its trademarks in corresponding domain names. This is registration in bad faith pursuant to paragraph 4(b)(ii) of the Policy. See Accor, SoLuxury HMC v. Cong ty Cp Dau tu Tai chinh va Phat trien Thuong mai Quoc te A Chau, WIPO Case No. D2012-0061.
The disputed domain names re-direct to a competing web site which misleads and diverts consumers from Complainant´s website. The disputed domain names are virtually identical and confusingly similar to the Complainant’s trademarks. A likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s web site to the Respondent’s web site. In this regard, prior UDRP decisions have established that attracting Internet traffic by using a domain name identical or confusingly similar to a complainant’s trademark is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.
On the basis of the above outlined circumstances, and in terms of evidence provided by the Complainant, the Panel concludes that the Respondent is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith under paragraph 4(a)(iii) of the Policy.
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 names, <grandmercureparkavenue.com>, <novotelbangkoksiamsquare.com>, <novotellotushotelbangkok.com>, be cancelled, as requested by the Complainant.
Enrique Ochoa de González Argüelles
Sole Panelist
Dated: March 12, 2012