World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Nguyen Dong

Case No. D2012-1749

1. The Parties

The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Nguyen Dong of Phu Loc, Thua Thien Hue, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <mercuredanang.com> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2012. On August 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 September 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2012.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 5, 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.

4. Factual Background

The following facts are undisputed.

The Complainant is Accor, a French group of companies, a leader in budget and mid-scale hotels, and in upscale and luxury hospitality services, that operates more than 4,200 hotels in 90 countries worldwide and over 500,000 rooms, from budget to upscale. The group includes famous hotel chains, such as “Mercure”. Accor received the “Tourism for Tomorrow Award 2010” from the World Travel and Tourism Council (WTTC).

The Complainant owns and mainly communicates on the Internet through the websites “www.accorhotels.com” and “www.mercure.com” in order to allow Internet users a quick and easy search and booking of its hotels.

The Complainant operates twelve hotels in Viet Nam and, as of December 31, 2011, had more than 2,700 employees in that country. In particular, the Complainant operates two Mercure and 3 M Gallery hotels in Viet Nam.

The Complainant operates a Mercure hotel in Danang, Viet Nam and communicates about this hotel using the website “www.mercure-danang.com”.

The Complainant is the owner of the trademark MERCURE, a well-known mark protected worldwide in particular in relation to hotel services.

The Complainant is the owner of the International Registration number 847330, registered December 13, 2004, covering various hotel related services consisting of a combined word / device mark including the word MERCURE, a stylized M in the background and the words “Accor Hotels” in a smaller font (the “International Registration”). The International Registration, which also designates Viet Nam, covers services in classes 39, 41 and 43.

The Domain Name was registered on May 23, 2011 and according to the evidence submitted by the Complainant it resolves to an index page.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Complainant contends that the trademark MERCURE, under which it operates several hotels, is a well-known trademark protected worldwide in particular in relation to hotel services.

The renown of the Complainant’s trademark MERCURE was stated by previous UDRP panel decisions.

The Complainant contends that the Domain Name is confusingly similar to the International Registration because it incorporates the entirety of the International Registration. The addition of the geographical term “danang” would reinforce the likelihood of confusion because the Domain Name would refer to the hotel operated by the Complainant in this city.

The Complainant contends that as an additional circumstance the Domain Name is confusingly similar to the Complainant’s domain name <mercure-danang.com> which resolves to the official website of the hotel.

The Complainant contends that the Respondent is not affiliated with the Complainant in any way, nor it has been authorized or licensed by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark.

Furthermore, the Respondent has no prior rights or legitimate interests in the Domain Name. The International Registration preceded the registration of the Domain Name for years. In addition the registration of the Complainant’s domain name <mercure-danang.com> precedes the registration of the Domain Name of two months.

Moreover the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. The Domain Name resolves to an index page.

The Complainant has sent a cease-and-desist letter and reminders to the Respondent, but has not received any reply.

The Respondent’s bad faith registration is established by the fact that the Respondent must have been aware of the existence of the Complainant’s trademark and hotels at the time of the registration, given the reputation of the Complainant’s trademark MERCURE and the reproduction in the Domain Name of the MERCURE trademark combined with the geographical term “danang”, being the name of the city where the Complainant operates a Mercure hotel.

The Respondent’s bad faith use of the Domain Name is evidenced by the fact that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name as it resolves to an index page for more than a year. The Complainant contends that this constitutes passive holding of a domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name registered by the Respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to the International Registration.

The most dominant part of the International Registration is the word element MERCURE and the Domain Name incorporates this trademark MERCURE in its entirety; the only difference is the mere adjunction of the term “Danang”.

The addition of the geographical indicator “Danang” (the name of a city in Viet Nam) is not enough to the Panel to prevent confusing similarity between the Domain Name and the trademark invoked by the Complainant (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865, and Accor v. Above.com Domain Privacy/ Belcanto Investment Group WIPO Case No. D2012-1179).

On the contrary, considering that in Danang, the Complainant operates a Mercure hotel, the addition of the term “Danang” is likely to enhance the confusion and to lead customers to believe that the Domain Name is effectively linked to, affiliated with or connected to the Complainant, being specific to the Mercure hotel in Danang.

The Panel believes that people considering the Domain Name without awareness of its content may think that the Domain Name is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Finally, with regards to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000 0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the Domain Name and does not give any distinctiveness.

Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s International Registration.

For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) 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.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.

The Complainant states that the Respondent is not affiliated with the Complainant in any way, or authorized or licensed to use the MERCURE trademark, or to seek registration of any domain name incorporating said mark.

Furthermore, the use of the Domain Name can not be considered a bona fide offering of goods or services. In particular the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Domain Name for more than a year now resolves to an index page.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world, at least in the sector of hotels and holiday business and management. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name. And indeed, the Respondent’s awareness may be inferred by the fact that it registered the Domain Name incorporating MERCURE, i.e. the most dominant element of the International Registration, in its entirety with the addition of the geographical term “Danang”, a city in which the Complainant operates a Mercure hotel. Lacking a response from the Repsondent, the Panel finds that Domain Name was registered in bad faith.

The Panel finds that the Respondent also uses the Domain Name in bad faith. There is lack of active use (e.g., to resolve to a website) of the Domain Name without any active attempt to sell or to contact the trademark holder, which constitutes passive holding. Although this as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision, in particular the fact that no response has been filed and the fact that the Domain Name has not been used more than a year, are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 <mercuredanang.com> be cancelled.

Willem J. H. Leppink
Sole Panelist
Dated: October 12, 2012

 

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