WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Internet Service, Nguyen Ben

Case No. D2015-2054

1. The Parties

The Complainant is Accor, a French company with a registered office in Paris, France, represented by Dreyfus & associés, France.

The Respondent is Internet Service, Nguyen Ben, with an address in Vung Tau, Viet Nam.

2. The Disputed Domain Name and Registrar

The disputed domain name is <pullman-vungtau.com>. It is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

According to the information and documents provided by the WIPO Arbitration and Mediation Center (the "Center"), the history of this proceeding is as follows:

- The Complaint was filed with the Center on November 12, 2015.

- On November 12, 2015, the Center transmitted by email to the Registrar a Request for Registrar Verification in connection with the disputed domain name. On November 12, 2015, the Registrar transmitted by email to the Center a verification response advising that the registrant of the disputed domain name is "Internet Service", and providing applicable contact details. The WhoIs database information indicates that the "Registrant Organization" is "Internet Service" and the "Registrant Name" is "Nguyen Ben".

- The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

- In accordance with Rules paragraphs 2(a) and 4, on November 17, 2015 the Center formally notified the Respondent of the Complaint, and this proceeding commenced on that date. The Center advised the Respondent that, in accordance with Rules paragraph 5, the due date for a Response to the Complaint was December 7, 2015.

- The Center sent the Notification of the Complaint to the Respondent by email to various email addresses, including the email address specified on the website to which the disputed domain name resolves, by facsimile transmission to the facsimile number in the WhoIs database and by courier to the postal address in the WhoIs database. Some but not all of the emails were rejected as undeliverable. The facsimile transmission was not successful because the facsimile number in the WhoIs database was invalid. The couriered package was not delivered because the postal address in the WhoIs database was incorrect.

- The Respondent did not file a Response by the specified due date or at any time thereafter. The Center delivered a Notification of Respondent Default to the Respondent on December 9, 2015.

- The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on December 18, 2015. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based on the information and documents provided by the Center, the Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met.

4. Language of Proceeding

The language of the registration agreement for the disputed domain name is English. Consequently, the language of this proceeding is English. (See Rules paragraph 11.)

5. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant and the Panel's review of the website to which the disputed domain name resolves, as described below:

- The Complainant is a French company with its registered office in Paris, France. The Complainant operates more than 3,700 hotels in 92 countries under various brands, including Pullman, Novotel, Grand Mercure and Ibis.

- The Complainant currently operates three PULLMAN brand hotels in Viet Nam in major cities and prime tourist destinations. The Complainant has publicly announced that it will open a five-star international "Pullman Vung Tau" hotel in the city of Vung Tau, Viet Nam in January 2016.

- The Complainant uses, and is the owner of, the trademark PULLMAN, which was registered as an international trademark, including for Viet Nam, for use in association with various goods and services, including hotel services, on May 5, 1986 (registration no. 502625). The Complainant also owns the trademark PULLMAN HOTELS AND RESORTS design, which was registered as an international trademark, including for Viet Nam, for use in association with hotel services on October 10, 2013 (registration no. 1188855).

- The Complainant uses the domain name <pullmanhotels.com> for a website that advertises and offers the Complainant's hotel services.

- The disputed domain name was registered on August 1, 2014.

- The disputed domain name resolves to a Vietnamese language website about the Complainant's soon-to-open "Pullman Vung Tau" hotel in the city of Vung Tau, Viet Nam. The website displays the title "Pullman Vung Tau", uses the PULLMAN HOTELS AND RESORTS design trademark, contains an image of the Complainant's soon-to-open hotel, contains a "Booking" link that is not operative and other information (in the Vietnamese language), and provides links to a number of commercial websites advertising products or services unrelated to the Pullman Vung Tau hotel. The very bottom of the website contains the following note (in the English language): "http://pullman-vungtau.com is belong to Viet Nam Tourist Guide Organization".

- The Respondent is not a licensee of the Complainant's PULLMAN trademark or PULLMAN HOTELS AND RESORTS design trademark, and does not have the Complainant's authorization to use either of those trademarks.

- In 2014 the disputed domain name was registered under a privacy shield. In October 2014, the Complainant sent a cease-and-desist letter to the privacy shield registrant demanding disclosure of the identity and contact details of the actual registrant of the disputed domain name. In response to the demand, erroneous contact details were provided to the Complainant. The disputed domain name was then suspended by the former registrar for the disputed domain name.

- In October 2015 the Complainant discovered that the registration of the disputed domain name had been transferred to the Registrar, and the disputed domain name had been reactivated and was being used for an active website.

The Respondent has not filed a Response to the Complaint or disputed the Complainant's factual assertions or evidence in any other manner.

On its own initiative, the Panel reviewed the website to which the disputed domain name resolves in order to view the content and functionality of the website (including links on the website). The Panel's review of the website is consistent with the consensus view that a UDRP panel may undertake limited factual research into matters of public record, including accessing the website linked to a disputed domain name, if the panel considers it necessary to reach the right decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), section 4.5.

6. Parties' Contentions

A. Complainant

The Complainant contends as follows:

- The Complainant is the owner of the registered PULLMAN trademark and the PULLMAN HOTELS AND RESORTS design trademark, and the disputed domain name is confusingly similar to those trademarks because the disputed domain name combines the PULLMAN trademark with the geographic term "vung tau" to intentionally create a likelihood of confusion with the PULLMAN trademark used in association with the Complainant's soon-to-open "Pullman Vung Tau" hotel in the city of Vung Tau, Viet Nam.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name, and does not have any right to use the Complainant's trademarks.

- The Respondent registered and is using the disputed domain name in bad faith for various reasons, including: (a) the Respondent knew or should have known of the Complainant's trademarks when the Respondent registered the disputed domain name; (b) the Respondent used a privacy shield service to hide the Respondent's identity and contact details; (c) the Respondent provided incorrect contact information; (d) the Respondent is using the disputed domain name to confuse Internet users and divert them to the Respondent's website, which appears to be an official website for the Complainant's soon-to-open "Pullman Vung Tau" hotel; and (e) the Respondent registered the disputed domain name to prevent the Complainant from using the Complainant's trademark in the disputed domain name.

B. Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant's contentions in any other manner.

7. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as "cybersquatting" or "cyberpiracy". The Policy does not apply to other kinds of disputes between a trademark owner and a domain name registrant.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(b) requires that the Panel ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice of the Complaint to the Respondent. Further, the Registrar's Domain Registration Agreement (section 4) requires the Respondent to keep the contact information in the WhoIs record for the disputed domain name current and complete. The Respondent cannot hide behind a failure to provide accurate and complete contact information to the Registrar. In the circumstances, the Panel finds that the Respondent has been given notice of this proceeding in accordance with Rules paragraph 2 and has been given a fair opportunity to answer the Complaint and present its case. In accordance with Rules paragraph 14(a), the Panel will proceed to a decision on the Complaint.

The Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondent's failure to file a Response to the Complaint (see WIPO Overview 2.0, section 4.6). In the circumstances, the Panel's decision is based on the Complainant's assertions and evidence, information obtained by the Panel as a result of the Panel's review of the website to which the disputed domain name resolves, and inferences drawn from the Respondent's failure to file a Response, all as set forth in this decision.

A. Identical or Confusingly Similar

The Complainant is the owner of the PULLMAN trademark and the PULLMAN HOTELS AND RESORTS design trademark, each of which has been registered for many years in Viet Nam and other countries for use in association with various goods and services, including hotel services. The Complainant also uses its PULLMAN trademark in the domain name <pullmanhotels.com> for a website that promotes the Complainant's hotel services. The Complainant asserts that each of the PULLMAN trademark and the PULLMAN HOTELS AND RESORTS design trademark are "well-known" or "famous". The Complainant's trademarks were registered before the disputed domain name was registered. The Respondent has not contested the Complainant's assertions. In the circumstances, the Panel finds that the Complainant has rights in the PULLMAN trademark and the PULLMAN HOTELS AND RESORTS design trademark.

The Policy requires that the disputed domain name be "identical or confusingly similar" to the Complainant's trademarks. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in previous UDRP decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant's trademark. See WIPO Overview 2.0, section 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant's trademarks.

The disputed domain name is comprised of the Complainant's PULLMAN trademark, a hyphen, the geographic term "vung tau" and the ".com" suffix.

The addition of a geographic term to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a geographic term that identifies the location of the services with which a trademark is ordinarily used may exacerbate or increase the likelihood of confusion. See WIPO Overview 2.0, section 1.9; L'Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd., WIPO Case No. D2008-1640; L'Oréal v. Liao Quanyong, WIPO Case No. D2007-1552; Accor v. Serdar Ceylan, WIPO Case No. D2011-2231; LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505; Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572; Quilvest SA & Quilvest Banque Privée v. Peter Cross, WIPO Case No. D2007-0587; L'Oréal v. Tina Smith, WIPO Case No. D2013-0820.

The addition of a hyphen in a domain name does not distinguish the domain name from the relevant trademark or avoid a finding of confusing similarity. See Quilvest SA & Quilvest Banque Privée v. Peter Cross, WIPO Case No. D2007-0587; Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572; L'Oréal v. Tina Smith, WIPO Case No. D2013-0820.

The ".com" suffix is typically irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark, because the ".com" suffix is merely descriptive of the relevant registry service and does not distinguish the domain name from the relevant trademark. See WIPO Overview 2.0, section 1.2; Accor v. Noldc Inc., WIPO Case No. D2005-0016; L'Oréal v. Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.

In light of the Respondent's use of the disputed domain name for a website about the Complainant's soon-to-open "Pullman Vung Tau" hotel (which uses the title "Pullman Vung Tau" and displays the PULLMAN HOTELS AND RESORTS design trademark), and in the absence of any explanation or rationale put forward by the Respondent for the registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant's PULLMAN trademark and was calculated to mislead and deceive Internet users who are searching for the official website for the Complainant's soon-to-open "Pullman Vung Tau" hotel.

For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's PULLMAN trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in previous UDRP decisions is that a complainant's burden of proof regarding this element must be applied in light of the fact that the nature of the registrant's rights or legitimate interests, if any, in a domain name lies most directly within the registrant's knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.1.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) the Complainant has not authorized the Respondent to register or use the disputed domain name or the Complainant's PULLMAN trademark; and (2) the Respondent is not using the disputed domain name for a bona fide offering of goods and services or for a legitimate non-commercial use, because the Respondent uses the disputed domain name for a website about the Complainant's soon-to-open "Pullman Vung Tau" hotel.

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any mark that includes the term "pullman" and is not commonly known as "pullman". In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this case (including the name of the Respondent, the distinctive nature of the Complainant's PULLMAN trademark and evidence of the Respondent's use of the disputed domain name for a website about the Complainant's soon-to-open "Pullman Vung Tau" hotel), the signed and certified Complaint together with an adverse inference from the Respondent's failure to respond to the Complaint or provide any justification for the registration and use of the disputed domain name are sufficient to satisfy the Complainant's evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is incumbent upon the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name. See WIPO Overview 2.0, section 4.6.

According to Policy paragraph 4(c), each of the following circumstances, if proved, demonstrate a registrant's rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's mark.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent's use of the disputed domain name must be in connection with a bona fide offering of goods or services (see WIPO Overview 2.0, paragraph 2.6). In this case, the Respondent's use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because:

- the disputed domain name is confusingly similar to the Complainant's registered PULLMAN trademark, which is distinctive and specific to the Complainant in connection with hotel services and has been used for many years;

- there is no apparent connection or relationship between the disputed domain name and the name or business of the Respondent; and

- the Respondent does not use the disputed domain name to advertise or sell the Respondent's own wares or services, but rather the Respondent uses the disputed domain name for a website that provides information about the Complainant's soon-to-open "Pullman Vung Tau" hotel and links to a number of commercial websites advertising products or services unrelated to the Pullman Vung Tau hotel and also contains an apparently false assertion that the disputed domain name belongs to "Viet Nam Tourist Guide Organization".

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from the Respondent's trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a non-commercial or fair use of the disputed domain name. To the contrary, the evidence establishes that the Respondent uses the disputed domain name for a website that contains links to a number of commercial websites advertising products or services.

For those reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

"Bad faith" within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are evidence that a registrant has registered and is using a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.

The Policy expressly states that those circumstances are non-exhaustive.

To establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent's website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or the Complainant's PULLMAN trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent's knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant and the Complainant's PULLMAN trademark when the Respondent registered the disputed domain name, and the Respondent registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent's website, based on the following circumstances:

- The Complainant's PULLMAN trademark is distinctive and specific to the Complainant in connection with hotel services, and has been used for many years.

- The disputed domain name combines the PULLMAN trademark with a geographic term indicating the location of the Complainant's soon-to-open "Pullman Vung Tau" hotel in the city of Vung Tau, Viet Nam, and is calculated to mislead and deceive Internet users who are searching for the Complainant's official website for that hotel.

- There is no apparent connection or relationship between the disputed domain name and the Respondent or the Respondent's business, wares or services.

- The Respondent uses the disputed domain name for a website about the Complainant's soon-to-open "Pullman Vung Tau" hotel (e.g., the website displays the title "Pullman Vung Tau", uses the PULLMAN HOTELS AND RESORTS design trademark, contains an image of the Complainant's soon-to-open hotel and contains an inoperative "Booking" link). The website provides links to a number of commercial websites advertising products or services unrelated to the Pullman Vung Tau hotel and contains an apparently false assertion that the disputed domain name belongs to "Viet Nam Tourist Guide Organization".

- There is no apparent legitimate justification for the Respondent's registration and use of the disputed domain name.

- The Respondent has not denied knowledge of the Complainant or the Complainant's PULLMAN trademark.

In addition, the Panel draws an adverse inference from failure by the Respondent to provide any explanation or rationale for the registration or use of the disputed domain name.

The Panel also finds that the Respondent's registration and use of the disputed domain name likely results in commercial gain to the Respondent. It is well known that many websites generate advertising revenue by directing traffic to other websites. Based on the links to commercial websites displayed on the Respondent's website, and in the absence of any explanation by the Respondent, the Panel finds that the website generates revenue for the Respondent. See WIPO Overview 2.0, section 3.8. See also L'Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd., WIPO Case No. D2008-1640.

For those reasons, and pursuant to Policy paragraph 4(b)(iv), the Panel finds that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet users to the Respondent's website for commercial gain.

In the circumstances, the Panel need not consider whether any of Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

8. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is confusingly similar to the Complainant's PULLMAN trademark; (ii) the Respondent does not have any rights to or legitimate interests in the disputed domain name; and; (iii) the Respondent registered and is using the disputed domain name in bad faith.

For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name <pullman-vungtau.com> be transferred to the Complainant.

Bradley J. Freedman
Sole Panelist
Date: December 29, 2015