About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor SA v. Registration Private, Domains By Proxy, LLC / Anthony Myers

Case No. D2017-2333

1. The Parties

The Complainant is Accor SA of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Anthony Myers of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <edm-pullman-mandalay.com> 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 November 24, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint.

On December 5, 2017, at the request of the Complainant, the administrative proceeding was suspended. The Complainant filed an amended Complaint on February 2, 2018, and the administrative proceeding was reinstituted on February 5, 2018, at the request of the Complainant.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2018.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 8, 2018. 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 Complainant is a French multinational hotel group, which operates more than 4,000 hotels in 95 countries. The group includes well-known hotel chains ranging from the economy to the upscale and luxury segments, such as Pullman, Novotel, Mercure and Ibis. Pullman is the Complainant’s upscale hotel brand, with 119 hotels and 20,000 employees worldwide. A new Pullman hotel with 358 rooms, “Pullman Mandalay”, is scheduled to be opened in Myanmar in 2018. Its opening has been publicized by the Complainant.

The Complainant is the owner of the International Trademark PULLMAN No. 1197984, registered on November 28, 2013, covering hotel and restaurant services (class 43). Additionally, the Complainant owns the following domain names reflecting its PULLMAN trademark: <pullmanhotels.com>, <pullman−hotels.com>.

The Respondent is a private person based in Hong Kong. The Complaint is further directed against Registration Private, Domains By Proxy, LLC, a privacy protection service used by the Respondent in connection with the disputed domain name.

The disputed domain name, <edm-pullman-mandalay.com>, was registered on July 4, 2017. It does not appear that the Respondent has used the disputed domain name for an active website. The disputed domain name resolves to a landing page containing pay-per-click (“PPC”) advertising links related to different hotels. The landing page is headed with the message: “This Web page is parked for FREE, courtesy of GoDaddy.com”. It also includes solicitations from the Registrar to sell the disputed domain name or develop an associated website.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends the following:

The disputed domain name is confusingly similar to the Complainant’s well-known PULLMAN trademark, as it incorporates this trademark in its entirety, combined with the geographic term “Mandalay” and the letters “edm”, intersected by hyphens. In light of the announced opening of the Complainant’s “Pullman Mandalay” hotel in Myanmar, the likelihood of confusion with the Complainant’s trademark is increased.

The Respondent has no rights or legitimate interests in the disputed domain name, since it is not affiliated with the Complainant in any way nor has he been licensed or authorized by the Complainant to use the PULLMAN trademark or to seek registration of any domain name incorporating this trademark. Neither is the Respondent commonly known by the disputed domain name. Furthermore, the disputed domain name is so similar to the Complainant’s trademark and the name of its “Pullman Mandalay” hotel that the Respondent cannot reasonably claim to have intended the disputed domain name to serve any legitimate, bona fide purpose. Since the disputed domain name resolves to a webpage containing PPC, which most likely generates revenue, the Respondent cannot claim that he is making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Given that the Complainant and its PULLMAN trademark are well-known throughout the world, it is implausible that the Respondent had no knowledge of the Complainant and its rights at the time of registration of the disputed domain name. As the registrant of the disputed domain name, it was the Respondent’s duty to verify upon registration that the disputed domain name would not infringe the rights of any third party. A quick trademark search or even a simple Google search would have been sufficient to reveal to the Respondent the existence of the Complainant and its rights in the PULLMAN trademark.

The Respondent is using the disputed domain name to operate a webpage with sponsored links. By doing so, he is taking undue advantage of the Complainant’s trademark and its fame, in order to attract Internet users to his webpage and generate profits. Furthermore, as an email server has been configured on the disputed domain name, there is a possibility that the Respondent might be engaged in a phishing scheme, passing himself off as the Complainant or its Myanmar affiliate and aiming to steal personal information from Internet users.

The Complainant sees further evidence of bad faith in the fact that the Respondent has used a privacy shield in order to conceal his identity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has sufficiently proven that it has rights in the PULLMAN trademark.

Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name consists of the Complainant’s PULLMAN trademark with the addition of the letters “edm” (with no apparent meaning) and the geographical term “Mandalay”, separated by hyphens. According to the consensus of UDRP panels, the addition of such geographical or meaningless terms will not prevent a finding of confusing similarity under the first element of the Policy, where the relevant trademark is recognizable within the disputed domain name (see, in this context, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”). Such is the case here. Accordingly, the Panel finds that the disputed domain name is confusingly similar with a trademark in which the Complainant has rights.

The Complainant has therefore satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, the Complainant is required to provide prima facie evidence that the Respondent lacks any rights or legitimate interests in the disputed domain name, which can then be refuted by the Respondent. The Panel notes that, in the present case, the Respondent has chosen not to answer to the Complainant’s contentions.

The Panel takes from the record that the Complainant did not authorize or license the Respondent to use its PULLMAN trademark. Neither can the Respondent claim to be known by the disputed domain name. Furthermore, the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services or with any noncommercial or fair use purposes. Consequently, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has thus satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In light of the Complainant’s worldwide reputation and the fact that the Complainant’s rights in its PULLMAN trademark predate the registration of the disputed domain name, the Respondent must have been aware of the Complainant’s rights when registering the disputed domain name and thus made the registration in bad faith. In the opinion of the Panel, the fact that the domain name registration occurred at the same time as the Complainant was preparing to open its new “Pullman Mandalay” hotel and thereby reinforcing its brand in Myanmar cannot be a coincidence. In the Panel’s view, the fact that the disputed domain name reproduces the name of the Complainant’s new Myanmar hotel, “Pullman Mandalay”, increases the risk of confusion with the Complainant and its trademark.

The Respondent has not used the disputed domain name, but instead has allowed it to be parked by the Registrar. Several months after registration, the Respondent continues to allow the disputed domain name to display advertising links, some for the Complainant’s competitors.

Taking into consideration the reputation and distinctiveness of the Complainant’s trademark and the lack of plausible alternatives for registering and holding the disputed domain name other than to exploit the Complainant’s trademark, the Panel finds that there are enough indications in the present case to support an inference of bad faith under the passive holding doctrine (see section 3.3 of the WIPO Overview 3.0).

Accordingly, the requirement under paragraph 4(a)(iii) of the Policy is also met.

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 disputed domain name <edm-pullman-mandalay.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: March 20, 2018

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/en/web/podcasts/ https://www.wipo.int/news/en/