WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor S.A. v. Wenbin Kou

Case No. D2018-1051

1. The Parties

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

The Respondent is Wenbin Kou of Tianshui, Gansu, China.

2. The Domain Name and Registrar

The disputed domain name <ziyue-pullman.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 15, 2018.

The Center appointed Joseph Simone as the sole panelist in this matter on June 26, 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

Accor S.A. (Accor) is a French multinational hotel group, with expertise in economic and mid-scale hotels as well as upscale and luxury hospitality services. Accor operates more than 4,000 hotels in 100 countries worldwide including notable hotel chains such as PULLMAN, RAFFLES, SOFITEL, ONEFINESTAY, FAIRMONT, MGALLERY, SWISSOTEL, GRAND MERCURE, NOVOTEL, MAMA SHELTER, MERCURE and IBIS. Accor has 121 PULLMAN hotels worldwide which organize more than 30,000 events each year. Accor is also present in China with 239 hotels including 32 PULLMAN hotels. Pullman Qingdao Ziyue Hotel is a 5-star luxury hotel in Chengyang district, Qingdao, China.

The Complainant owns, among many others, the following trademark registrations:

- Chinese trademark PULLMAN No 4734292, filed on June 21, 2005, registered on February 7, 2009 and covering services in class 43;

- Chinese trademark PULLMAN No 4873437, filed on September 2, 2005, registered on May 7, 2009 and covering services in class 43;

- International trademark PULLMAN No. 1197984 registered on November 28, 2013, covering services in class 43;

- International trademark PULLMAN HOTELS AND RESORTS No. 1188855 registered on October 10, 2013, designating multiple jurisdictions, including China and covering services in class 43.

In addition, the Complainant operates, among others, the following domain name incorporating its trademark:

- <pullmanhotels.com> registered on March 21, 1999.

The disputed domain name <ziyue-pullman.com> was registered on August 12, 2017. It redirects to a gambling website. Prior to commencing this proceeding, the Complainant attempted to resolve the matter amicably as follows:

On August 29, 2017, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights concerning the disputed domain name <ziyue-pullman.com>. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant free of charge. The Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders. On August 29, 2017, the Complainant sent another cease-and-desist letter via email to the registrar and the Hosting service provider to obtain the deactivation of the website <ziyue-pullman.com>. However, no response was obtained despite several reminders. Subsequently, the Complainant commenced this proceeding.

In accordance with paragraph 11 of the Rules:

“…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

As the language of the registration agreement is English, the administrative proceeding will be in English.

5. Parties’ Contentions

A. Complainant

The Complainant made comprehensive submissions, supported by ample case law. The submissions are summarized as follows.

Identical or confusingly similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark PULLMAN in which it has rights, based on the following:

(i) The Complainant is the owner of international and Chinese trademark registrations for PULLMAN and PULLMAN HOTELS AND RESORTS covering services in class 43, including hotels. In addition, the Complainant operates websites under domain names reflecting its trademarks, including <pullmanhotels.com>.

(ii) The disputed domain name reproduces the Complainant’s trademark PULLMAN in its entirety, which previous panels have considered as well-known in the field of hotels. Many WIPO decisions have considered that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark. The extension “.com” is not to be taken into consideration when assessing similarity and the addition of the element “ziyue” is insufficient to avoid any likelihood of confusion.

(iii) The Complainant has used the trademark PULLMAN in connection with hotel services around the world. Consequently, the public has learnt to perceive the services offered under these trademarks as being those of the Complainant. Therefore, the public would reasonably assume and are likely to be misled that the disputed domain name is owned by or at least related to the Complainant. Moreover, in light of the Complainant’s “Qingdao Ziyue Pullman hotel”, the disputed domain name heightens the risk of confusion.

Rights or legitimate interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names based on the following:

(i) The Respondent is not affiliated with the Complainant in any way and has not been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the aforesaid trademark.

(ii) In previous WIPO decisions, panels found that in the absence of any license or permission from a complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

(iii) The Respondent has no prior rights or legitimate interests in the domain name as PULLMAN trademarks have been registered prior to the registration of the disputed domain name.

(iv) The disputed domain name is so similar to the PULLMAN trademark of the Complainant and the name of its Qingdao Ziyue Pullman Hotel that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

(v) The disputed domain name redirects to “www.rk2253.com”, which is a gambling website. Obviously, the Respondent is making a non-legitimate use of the disputed domain name with the intent to obtain commercial gain.

(vi) The Respondent appears to be a cyber-squatter, as it is associated with more than 10,500 domain names, replicating trademarks like HYUNDAI, ADIDAS, HONDA, and LANDROVER.

(vii) The Respondent never answered the Complainant’s cease-and desist letter, and therefore did not avail itself of its right to respond.

(viii) The disputed domain name was subject to a UDRP procedure in which the panel ordered the transfer of the said domain name to the Complainant (Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng, WIPO Case No. D2016-1262).

Registered and used in bad faith

The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:

(i) It is unlikely the Respondent was not aware of the Complainant’s trademark rights given its worldwide reputation and since the composition of the disputed domain name is so similar to the Complainant’s Qingdao Ziyue Pullman Hotel. Supposing the Respondent did not have actual knowledge, a quick trademark search or web search would have revealed the Complainant’s rights in the mark, and failure to do so is a contributory factor to bad faith.

(ii) The Respondent has not tried to defend its rights nor stated any valid arguments to justify its registration in response to the cease-and-desist letter.

(iii) The Respondent appears to be a cyber-squatter, as it is associated with several domain names, replicating trademarks like HYUNDAI, ADIDAS, HONDA, and LANDROVER.

The Complainant submits that the disputed domain name is being used in bad faith on the following grounds:

(i) In the absence of any license or permission from the Complainant, no bona fide or legitimate use of the disputed domain name can be claimed.

(ii) The disputed domain name redirects to “www.rk2253.com”, a gambling website which is likely to generate revenue. Indeed, the Respondent took undue advantage of the Complainant’s trademark to attract Internet users to a website for commercial gain which constitutes use in bad faith.

(iii) The Respondent’s primary motive was likely to capitalize on the Complainant’s trademark rights, through the creation of initial confusion, misleading Internet users to link the site to which the disputed domain name redirects. Thus, the disputed domain name may confuse Internet users as to the source, sponsorship, affiliation, or warranty of the products and services present on the website.

(iv) It is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark PULLMAN for which the Complainant has international and Chinese trademark registrations. The Complainant also has unregistered rights by virtue of using the mark PULLMAN in connection with hotel services around the world. As such, the public readily perceives the services offered under the trademark as those of the Complainant.

A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).

When comparing the domain name with the trademark, the Top-Level Domain “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).

After removing the “.com” suffix, the other element that remains is “ziyue”, the Chinese pinyin for “Confucius says”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however impact on the assessment of the second and third elements. See section 1.8 of WIPO Overview 3.0. Accordingly, the addition of “ziyue” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s PULLMAN trademark.

The first requirement of the UDRP is therefore satisfied.

B. Rights or Legitimate Interests

A complainant must demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.

In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:

(i) There is no evidence that the Respondent is commonly known by the disputed domain name.

(ii) Prior to receiving notice of the dispute, there is no evidence of contemplated or actual bona fide use. The Respondent is not authorized or licensed to use the trademark PULLMAN or to apply for a domain name incorporating the mark. Moreover, the website redirects to a gambling website, suggesting the Respondent is merely using the fame of the trademark to attract consumers to its website. This cannot be bona fide.

(iii) The Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Rather, the disputed domain name redirects to a gambling website from which it presumably earns revenue. Thus, the disputed domain name is merely a bait which relies on consumer confusion to redirect Internet users interested in the Complainant to the Respondent’s own website with a view to commercial gain.

Compounding the Respondent’s lack of rights is the fact that the Respondent is associated with more than 10,500 domain names, replicating trademarks including, HYUNDAI, ADIDAS, HONDA and LANDROVER. Also, the Respondent did not reply to the Complainant’s cease-and-desist letter, thereby failing to avail itself of an opportunity to demonstrate legitimate interests.

Furthermore, the disputed domain name was previously subject to a UDRP procedure in which the panel ordered the transfer of the disputed domain name to the Complainant.

Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0) and the Respondent has not presented any evidence to rebut the Complainant’s assertions.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second requirement of the UDRP is therefore satisfied.

C. Registered and Used in Bad Faith

Finally, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention to subparagraphs (ii) and (iv):

“(ii) you have 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 you have engaged in a pattern of such conduct;

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Relevant to both of these elements is whether the Respondent “knew or should have known” of the Complainant’s trademark rights which is demonstrative of bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). In this case the Panel is satisfied the Respondent did in fact know of the Complainant’s trademark, given that the disputed domain name wholly incorporates the Complainant’s trademark as well as the word “ziyue” which forms part of the name of one of the Complainant’s hotels, the “Qingdao Ziyue Pullman Hotel”. As the Complainant contends, it is implausible the Respondent was unaware of the Complainant’s rights, and this is a case of opportunistic bad faith.

With respect to subparagraph (ii), the Panel finds the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. This is because the Respondent is associated with more than 10,500 domain names, replicating trademarks like HYUNDAI, ADIDAS, HONDA, and LANDROVER. The Panel believes the Respondent intended to prevent the Complainant from registering the disputed domain name so that it could freely ride off the reputation of the Complainant’s mark in order to attract Internet users.

With respect to subparagraph (iv) the Panel is also satisfied that by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, the Respondent intended to divert customers of the Complainant to its website for commercial gain. The fact that the disputed domain name is so similar to the name of one of the Complainant’s hotels means that diversion of the Complainant’s customers to the Respondent’s page is highly likely.

The disputed domain name redirects to the Respondent’s gambling website from which it can earn revenue. This is a classic example of taking advantage of a well-known mark with a view to commercial gain.

Along with the failure of the Respondent to submit a response to the contrary, this leads to the conclusion that the Respondent registered and is using the disputed domain name in bad faith.

The third requirement of the UDRP is therefore satisfied.

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 <ziyue-pullman.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: July 18, 2018