WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Yu Xiao Hua/喻晓华
Case No. D2013-1619
1. The Parties
The Complainant is Accor of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Yu Xiao Hua/喻晓华 of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <grandmercureorientalginzashenzhen.com> (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2013, 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. In response to a notification by the Center, the Complainant submitted the missing annexes to the Complaint on September 27, 2013.
On September 17, 2013, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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 in both Chinese and English, and the proceedings commenced on September 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2013.
The Center appointed Linda Chang as the sole panelist in this matter on November 6, 2013. 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 Accor is a hotel operator and is present in 92 countries with more than 3,500 hotels worldwide, including in China where the Respondent resides.
The Complainant is the right holder of trademarks GRAND MERCURE and MERCURE, including International Registration No. 900835, International Registration No. 900839 and International Registration No. 847330. All the above trademarks are protected in China.
The Respondent registered the Domain Name on April 25, 2013 and the Domain Name was once resolved to an online booking website for a hotel named Grand Mercure Oriental Ginza Hotel in Shenzhen. The Domain Name resolves at the time of this decision to an error page.
5. Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of the proceedings shall be the language of the registration agreement, while it also allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances. It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that each party is equally treated and given a fair opportunity to present its case.
The Registrar confirmed in this case the language of the Registration Agreement is Chinese. The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) The Complainant is located in France and has no knowledge of Chinese. Using Chinese as the language of the proceedings would increase the overall cost for the proceedings and unduly delay the proceedings.
(b) The Respondent has knowledge of English in that the Domain Name includes only Latin characters and it pointed to a website which is mostly in English while few headings are in Chinese.
The Panel notices the website at the Domain Name is currently inaccessible and the language of the website is unknown; however, based on the Complainant’s submissions, the homepage of the website at the Domain Name was displayed in English. The Panel also notices that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
Considering all of these circumstances, the Panel finds that using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, additional expense and delay would likely be incurred. The Panel thus decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name reproduces its trademarks GRAND MERCURE and MERCURE in their entirety, which is sufficient to establish that the Domain Name is identical or confusingly similar to its registered marks. The Complainant also contends that the association of the generic word “oriental” and the geographical terms “ginza” and “shenzhen” reinforces the likelihood of confusion because the Domain Name refers to the Complainant’s Grand Mercure Shenzhen Oriental Ginza Hotel.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name in that it is not affiliated with the Complainant in any way or authorized to use and register its trademarks or to seek registration of any domain name incorporating said marks, nor has the Respondent been commonly known by the name “Grand Mercure” or “Mercure”, nor has the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable 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.
The Complainant finally contends that the Domain Name was registered in bad faith because the Respondent was aware of the existence of the Complainant’s trademarks at the time of registration. The Complainant also contends that the Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights through the creation of confusion.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must satisfy the Panel of each of the following three elements:
(i) the Domain Name 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its trademark rights in the marks GRAND MERCURE and MERCURE. The Complainant’s marks GRAND MERCURE and MERCURE are protected as trademark worldwide including in China, and its trademark registrations preceded the Domain Name.
The Domain Name consists of five parts including “grandmercure”, “oriental”, “ginza”, “shenzhen” and “.com”. The Panel views that “oriental”, “ginza” and “shenzhen” are of generic or descriptive nature. The Panel also finds it an accepted principle that an addition of the suffixes such as “.com” being the generic Top-Level Domain (gTLD) does not function as a distinguishing factor.
Therefore, the Panel holds that the Domain Name incorporates the Complainant’s marks GRAND MERCURE and MERCURE and it is confusingly similar to the Complainant’s trademarks. The Panel further holds that the association of generic or geographical terms “oriental”, “ginza” and “shenzhen” does not avoid but instead strengthens the confusing similarity with the Complainant’s trademarks as the Domain Name is directly referring to a hotel operated by the Complainant in China, Grand Mercure Shenzhen Oriental Ginza Hotel.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademarks GRAND MERCURE and MERCURE.
B. Rights or Legitimate Interests
Based on the evidence presented by the Complainant, the Respondent is not affiliated with the Complainant nor has it been authorized by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating said marks.
The Panel finds there is no indication that the Respondent is commonly known by the Domain Name, or has the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable 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. In fact, the Respondent was once using the Domain Name to resolve to a website which was solely used as an online booking site for a hotel named “Grand Mercure Oriental Ginza Hotel” located in Shenzhen, China. The Panel agrees that the Respondent’s use of the Domain Name to divert Internet visitors to its own unauthorized or competing website is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (“no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website”).
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. The Panel thus draws such inference as the Panel considers appropriate, which is that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the Domain Name, and concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel notes that the Complainant and its marks GRAND MERCURE and MERCURE enjoy a considerable reputation worldwide including in China where the Respondent resides. The Panel views it is inconceivable that the Respondent had no actual notice of the Complainant’s trademark rights at the time of the registration of the Domain Name, especially given that the dominant part of the Domain Name is almost exactly identical to a hotel operated by the Complainant in Shenzhen, China. The Panel draws the conclusion that the Respondent registered the Domain Name in bad faith with intent to create an impression of an association with the Complainant and its trademarks GRAND MERCURE and MERCURE.
The Complainant has adduced evidence to show that the Respondent was using the Domain Name to host a website which features online reservation service for Grand Mercure Oriental Ginza Hotel in Shenzhen, China which service is not authorized or approved by the Complainant. The Respondent did not post any disclaimer on the site about its relationship with the Complainant and it is very likely that the Internet visitors would be misled into believing that the Domain Name belongs to the Complainant and that its associated site offers authentic online reservation services. The Panel therefore holds that the present case falls within the circumstances referred to in paragraph 4(b)(iv) of the Policy.
The Complainant had sent the Respondent a cease-and-desist followed with several reminders. It is pertinent for the Respondent to provide an explanation of its choice of the Domain Name, but the Respondent did not do so. The Respondent also failed to respond to the Complaint to rebut the contentions of the Complainant. The Panel views this reinforces the bad faith of the Respondent.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the Domain Name in bad faith.
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 <grandmercureorientalginzashenzhen.com> be transferred to the Complainant.
Date: November 20, 2013