Accor v. Symbolic Interactive
Claim Number: FA1203001436978
Complainant is Accor (“Complainant”), represented by Nathalie Dreyfus of Dreyfus & associés, France. Respondent is Symbolic Interactive (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novotellondontowerbridge.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 29, 2012.
On March 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <novotellondontowerbridge.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@novotellondontowerbridge.com. Also on April 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any formal response from Respondent.
Complainant requests that the domain name be cancelled.
A. Complainant
1. Complainant, Accor, owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NOVOTEL mark (e.g., Reg. No. 1,803,936 registered November 9, 1993).
2. Complainant owns international trademark registrations with the World Intellectual Property Office (“WIPO”) for its NOVOTEL mark (e.g., Reg. No. 875,041 registered September 12, 2005).
3. The disputed domain name is confusingly similar to Complainant’s mark.
4. The disputed domain name incorporates Complainant’s mark in its entirety with the addition of the geographic term “London” and the generic terms “tower” and “bridge.”
5. The disputed domain name is identical to one of Complainant’s hotel’s trade names.
6. Respondent has created a likelihood of confusion with Complainant’s trademark.
7. Respondent is not affiliated with Complainant in any way and has not been authorized or licensed by Complainant to use and register the NOVOTEL trademark.
8. The registration of Complainant’s mark preceded the registration of the disputed domain name for years.
9. The disputed domain name resolves to a parking page displaying sponsored links in the field of hotels and travel not affiliated with Complainant, or with its hotels, in any way.
10. Respondent had actual knowledge of Complainant when the disputed domain name was registered.
11. Respondent uses the disputed domain name to generate click through revenues by redirecting Internet users seeking Complainant’s hotel to its own page.
B. Respondent
Respondent, Symbolic Interactive, failed to submit a formal Response in this proceeding. Respondent did send the Forum an email on 4/26/12 stating:
“This is ridiculous. We've sent an email asking for an account at Go Daddy where you want the Domain to be transferred to - we can have it done within an hour of getting that information. We don't want the Domain, we are not using the Domain and if we could just 'delete' it from our account we would have don (sic) so weeks ago. Make is simple for us - give us a Godaddy account you want the Domain transferred to and will transfer in 24 hours or less.”
Although Respondent shows a willingness to transfer the disputed domain name, the Panel finds that Respondent has not submitted an unqualified consent to transfer. Therefore, the Panel will address the Complaint on the merits without the benefit of a formal response by Respondent.
For over 40 years, Complainant has operated mid-scale hotels and also has provided upscale and luxury hospitality services. Complainant operates more than 4,200 hotels in 92 countries worldwide and over 500,000 rooms, from economy to upscale. Complainant also operates a Novotel hotel in London named Novotel London Tower Bridge. Complainant owns, among others, the <novotel.com> domain name.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its NOVOTEL mark (Reg. No. 1,803,936 registered November 9, 1993). Complainant owns an international trademark registration with the World Intellectual Property Office (“WIPO”) for its NOVOTEL mark (Reg. No. 875,041 registered September 12, 2005).
Respondent registered the domain name on October 12, 2010. The disputed domain name resolves to a parking page displaying sponsored links in the field of hotels and travel not affiliated with Complainant or with its hotels. Respondent uses the disputed domain name to generate click through revenues by redirecting Internet users seeking Complainant’s hotel to Respondent’s own page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has established rights in the NOVOTEL mark pursuant to Policy ¶4(a)(i) through its trademark registrations with the USPTO and WIPO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant contends that Respondent’s <novotellondontowerbridge.com> domain name is confusingly similar to Complainant’s NOVOTEL mark. Complainant argues that the disputed domain name reproduces Complainant’s trademark in its entirety with the addition of the geographic term “London” and the generic terms “tower” and “bridge.” Complainant further argues that the disputed domain name contains the generic top-level domain (“gTLD”) “.com.” As these alterations are insufficient to differentiate a disputed domain name from a mark, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s NOVOTEL mark pursuant to Policy ¶4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has no rights or legitimate interests in the <novotellondontowerbridge.com> disputed domain name. Complainant asserts that Respondent is not affiliated with Complainant in any way and has not been authorized or licensed by Complainant to use and register the NOVOTEL mark. The WHOIS information, which lists the registrant as “GoDaddy.com, LLC,” does not indicate that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complaint contends that Respondent uses the disputed domain name to resolve to a parking page displaying third-party links redirecting Internet users to competing websites. The Panel presumes that Respondent receives pay-per-click fees from these linked websites. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products and services of third parties does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s disputed domain name resolves to a parking website displaying sponsored third-party links to websites directly competing with Complainant. The Panel presumes that the displayed links advertising for Complainant’s competitors divert Internet users away from Complainant, thereby disrupting Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products disrupts Complainant’s business and thus constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Complainant asserts that Respondent has created a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. The Panel finds that these sites contain pay-per-click links which generate revenue for Respondent when clicked. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Complainant contends that, in light of the fame and notoriety of Complainant's NOVOTEL mark, it is inconceivable that Respondent could have registered the <novotellondontowerbridge.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <novotellondontowerbridge.com> domain name be CANCELLED.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 10, 2012
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