Monday, May 12, 2008

What hoteel are you staying at in Berlin?

A fancy room at the Sofitel Berlin Schweizerhof

Ever try to book a hotel for an INTA annual meeting in the last weeks leading up to the meeting? Yeah, you feel me, right? No way you are scoring a room at a fancy hotel, and if you do find such a room, you are paying the equivalent of several Thomson search reports to get it. Thus, in the spirit of the upcoming INTA annual meeting, I couldn't resist the following case.

In ACCOR v. Vista Holdings, Inc., WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that was confusingly similar to the Complainant's ACCOR mark, that the failed-to-Respond(ent) had no rights or legitimate interests in the domain, and that the disputed domain was registered and used in bad faith.

This case was one of those complete knock-outs that you just love to read as a trademark attorney. While the facts, reasoning, and law were same old same old, the Panel provided a couple nuggets worth citing if a similar case comes up in your docket. First, in determining that the disputed domain was confusingly similar to the Complainant's trademark, the Panel made a point to reaffirm that nondistinctive terms remain nondistinctive when misspelled:

"The terms 'hotel' and accordingly 'hoteel' are descriptive for hotel and accommodation services as regards the Complainant’s trademark and the domain name. That a deviation in the form of a typographical error, namely, an additional letter 'e' appears in the non distinctive part of the disputed domain name does not change this evaluation." (Emphasis added).

Second, in finding registration in bad faith, the Panel used the Respondent's calculated domain name to evidence that the Respondent knew of the Complainant at the time of registering the disputed domain. According to the Panel:

"In the present case, the Respondent’s awareness of the mark ACCOR of the Complainant can already be derived from the fact that it combined the trademark of the Complainant with the term 'hoteels' obviously derived from the known word 'hotels' using the likely possibility of a typographical error by an Internet user duplicating the letter 'e'."

While it is sometimes challenging to demonstrate a Respondent's awareness of a Complainant's trademark, this case provides an example of how characteristics of a domain name, especially when combined with other factors such as fame of the Complainant's mark, can demonstrate knowing registration in bad faith.

Safe travels to all heading to Berlin, whether you are staying at an Accor® hotel (such as the Sofitel in these photos) or some other temporary residence that becomes your reprieve from the hustle of the INTA annual meeting!

INTA meeting tip: After a day of meetings with other attorneys, nothing beats a soak in the jacuzzi- excuse me- Jacuzzi® brand therapeutic whirlpool bath.

No comments: