ADMINISTRATIVE PANEL DECISION
Accor v. Catalin Alexandra Tibulca / WEB4COMM SRL Romania
Case No. DRO2005-0003
1. The Parties
The Complainant is Accor, Evry, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Catalin Alexandra Tibulca / WEB4COMM SRL Romania, Bucuresti, Romania.
2. The Domain Name and Registrar
The disputed domain name <novotel.ro> is registered with RNC.ro.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2005. On April 29, 2005, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On May 12, 2005, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2005. The Response was filed with the Center on June 9, 2005.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 22, 2005. 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 runs about 400 hotels under the name NOVOTEL and is the owner of numerous trademark registrations for NOVOTEL. Moreover Complainant holds the domain name <novotel.com>, registered on April 10, 1997.
The domain name at issue <novotel.ro> was registered on May 4, 2001.
Complainant’s trademark registrations and domain name predate Respondent’s domain name <novotel.ro>.
5. Parties’ Contentions
The Complainant submits that the language of the administrative proceeding should be English, since the registration agreement is available both in Romanian and in English.
The Complainant argues that the domain name <novotel.ro> reproduces entirely the Complainant’s trademark NOVOTEL, since it is well established that the mere adjunction of the ccTLD “.ro” is not a distinguishing feature and does not change the likelihood of confusion. As a result, the domain name is confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain name directly refers to the Complainant’s services.
The Complainant submits that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark and service marks, nor to seek the registration of any domain name incorporating the Complainant’s trademarks.
Furthermore, the Respondent has no prior rights or legitimate interests in the domain name. The Respondent has never used the term “NOVOTEL” in any way before nor after the Complainant started its business.
The Respondent is not known under the name “NOVOTEL” or any similar term.
The conduct of the Respondent is merely parasitical. The Respondent does not use the domain name in a legitimate way. There is no website exploited but a simple Internet page announcing that the website is still under construction.
The domain name was registered and used in bad faith. The domain name could lead average consumers to think that the domain name is related to the Complainant’s NOVOTEL website or at least that it resolves to the official website for NOVOTEL in Romania.
The Respondent is trading on the goodwill of the Complainant’s famous trademark to intentionally attract Internet users to Respondent’s website for commercial gain. The Respondent has registered several domain names. Those domain names reproduce other well-known trademarks such as Auchan, Chrysler, Jeep or Nivea. See e.g., Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001.
The Complainant has tried to contact the Respondent in order to reach an amicable settlement regarding the transfer of the domain name <novotel.ro>, but the Respondent has not replied. This behavior is an element of bad faith of the Respondent.
Respondent has not contested Complainant’s allegations, but argues that there is “no legal act nor contract” between Respondent and Complainant containing Mediation Agreement as defined in Art. 1 of the Rules. Respondent therefore concludes that the Center is an “incompetent court” and asks the Panel to analyze the legality of the procedure.
6. Discussion and Findings
I. Language of the proceeding
According to RNC.ro, the Registration Agreement concerning the disputed domain name is in Romanian and in English. Paragraph 11(a) of the Rules prescribes that the language of the proceedings shall be that of the Registration Agreement, subject to the authority of the Panel to determine otherwise, with regard to the circumstances of the administrative proceeding. On the basis of the provision in paragraph 11(a) of the Rules and in view of the circumstances in the case, the Panel decides that the language of the proceedings before the Panel shall be English. See, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001, and Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001.
II. Jurisdiction – Competent Court
The disputed domain name is registered with RNC.ro. Therewith the Respondent has accepted the Domain Name Dispute Resolution Policy of the RNC.ro. In fact, the dispute policy for the “.ro” ccTLD Registry states: “When a mutual resolution is not successful, the complaint is the subject of the Uniform Domain Name Dispute Resolution Policy endorsed and approved by ICANN (Internet Corporation for Assigned Names and Numbers)”.
The Panel agrees with what was affirmed in Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002, namely that: “It is the Complainant’s discretion to select the administrative dispute resolution provider from among those approved by ICANN (paragraph 4(d) of the Policy). The Center is one of those providers. Further, the Respondent is obviously familiar with the Policy and the proceedings (see Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001), and the Panel therefore concludes that the jurisdiction objection is merely filed in bad faith in an attempt to confuse the Panel and avoid filing a substantial reply to the allegations made by the Complainant”.
The Panel finds that the present case is analogous to the Beiersdorf AG v. Web4comm Srl Romania case and agrees with the findings that the Center has jurisdiction over the case, that the Panel was properly constituted and that there are no legal obstacles to issue a decision regarding the disputed Domain Name.
III. Applicable Rules
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2) the 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.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <novotel.ro> to be confusingly similar to the trademark NOVOTEL owned by the Complainant. As indicated by the Complainant and in accordance with many decisions rendered under the Policy the mere addition of the generic TLD <.ro> is not a distinguishing feature. In other words, the mere addition of this term does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademark (See Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199).
The Complainant has thus succeeded in proving evidence of the confusing similarity between the domain name under dispute and its trademark.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the NOVOTEL trademark. Respondent does not appear to make any legitimate use of the domain name for its own commercial or non-commercial activities. In fact, there is no website exploited but a simple Internet page announcing that the website is still under construction. Respondent has not been known under this domain name. Respondent has not contested any of the allegations made by the Complainant and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 domain name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
With regard to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been established and the Panel finds that the Respondent knew or should have known that the disputed domain name <novotel.ro> was confusingly similar to a trademark of a third party (See Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001, Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001, and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix GroupCo., WIPO Case No. D2000-0163).
Further evidence of the registration in bad faith of the disputed domain name lies in the fact that the Respondent registered other domain names identical to well-known trademarks, as stated both in the present Complaint, in Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001, and Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001.
In addition, it has to be noted that the disputed domain name was registered on May 4, 2001, nevertheless, the corresponding website is still “under construction”. Such a lengthy inactivity in the use of the domain name amounts, in the Panel’s view, to passive holding behavior which has been repeatedly held by previous panels as evidence of use of the disputed domain name in bad faith. As established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action, but also passive holding. In the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel concluded that inaction does not preclude a finding of “bad faith use” since what is relevant:
“…is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith…”
“.. the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept”
The panel in that case found for the complainant because complainant’s trademark was well known, while respondent was neither using the domain name, nor had shown any good faith use or intent to use the corresponding website and it was not possible to find any legitimate use of the domain name by the respondent.
This interpretation of “bad faith use” as including a non-justified holding of a domain name without either any activity on the corresponding website or any legitimate right in the name has from then onwards been approved by a number of panels (e.g.: Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung, WIPO Case No. DRO2002-0004);
Finally the Panel agrees with Complainant’s allegation, that the fact that Respondent did not answer to Complainant’s mail including a warning letter infers bad faith. In this sense see also Banque Transatlantique S. A. v. DOTSCOPE, WIPO Case No. D2004-1100, where the Panel found that “Additionally, it is important to outline the fact that the lack of action by the Respondent vis-à-vis the cease-and-desist letter sent to it by the Complainant and during this proceeding shows the Respondent’s clear absence of interest in proving the existence of a fair or legitimate interest on the Domain Name. Many decisions adopted under the Policy (see, for example, Aventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; or Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723) have considered that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by Paragraph 4(c) of the Policy or any other evidence of its rights or legitimate interests on the Domain Name. The Panel considers that this approach is fully applicable to the present case, as the Respondent has not refuted any of the evidence and arguments provided by the Complainant regarding its lack of rights or legitimate interests in the Domain Name”.
Taking into account the above-mentioned arguments, the Panel concludes that the evidence shown by the Complainant regarding the Respondent’s use of the domain name satisfies the requirements foreseen by the Policy, paragraph 4(a)(iii). Consequently, the Panel considers that the Complainant has proved that the Respondent registered and uses the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <novotel.ro>, be transferred to the Complainant.
Dated: July 4, 2005