WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and SoLuxury HMC v. Athena Pham, Athena Pham/PRIVATE REGISTRANT, A HAPPY DREAMHOST CUSTOMER

Case No. D2016-0475

1. The Parties

The Complainants are Accor and SoLuxury HM of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Athena Pham of Hanoi, Viet Nam; Athena Pham of Hanoi, Viet Nam / PRIVATE REGISTRANT, A HAPPY DREAMHOST CUSTOMER of Brea, California, United States of America.

2. The Domain Names and Registrars

The disputed domain names <accorproperty.com>, <hotelf1hotels.com>, <sofitelparis.com>, <suitenovotelhotels.com> and <thalassaseaandspa.com> are registered with DreamHost, LLC.

The disputed domain names <accorgrandmercure.com>, <accorluxuryhotels.com>, <accorluxuryresorts.com>, <accorluxuryvillas.com>, <accormgallery.com>, <accornovotel.com>, <accorpullman.com>, <accorsofitel.com>, <accorsuitenovotel.com>, <accorthesebel.com>, <accorvillas.com>, <mgalleryaccor.com>, <pullmanaccor.com> and <sofitelaccor.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 9, 2016, the Center transmitted by email to DreamHost, LLC and GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On March 9, 2016, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent Athena Pham is listed as the registrant and providing the contact details. On March 9, 2016, DreamHost, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent PRIVATE REGISTRANT, A HAPPY DREAMHOST CUSTOMER and contact information in the Complaint. The Center sent an email communication to the Complainants on March 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 14, 2016.

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 March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2016.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on April 12, 2016. 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 and SoLuxury HMC (the "Complainant") are acting as a single entity in these proceedings. SoLuxury HMC is a fully owned subsidiary of Accor. The Complainant owns numerous trademark registrations around the world relevant to these proceedings. In relation to Viet Nam, where the Respondent is located, the Complainant refers to the following registrations: International trademark ACCOR No. 727696 designating Viet Nam, dated December 28, 1999 (renewed), for goods and services in classes 16, 39 and 42; International trademark ACCORHOTELS No. 1103847, dated of December 12, 2011, for services in classes 35, 39 and 43; International trademark PULLMAN No. 502625 designating Viet Nam, dated of May 5, 1986 (renewed), for goods and services in classes 29, 30, 33 and 42; International trademark MERCURE No. 403334, dated of December 14, 1973, for goods and services in classes 8, 16, 21, 39, 41 and 42; International trademark GRAND MERCURE No. 900839 designating Viet Nam, dated of September 29, 2006, for services in class 43; International trademark NOVOTEL No. 542032 designating Viet Nam, dated of July 26, 1989 (renewed), for services in class 42; International trademark SUITE NOVOTEL No. 1046676, dated of April 20, 2010, for services in classes 35 and 43; International trademark SOFITEL No. 863332 designating Viet Nam, dated of August 26, 2005 (renewed), for services in classes 35, 39 and 43; International trademark THALASSA No. 860670, dated of July 6, 2005 (renewed), for goods and services in classes 3, 43 and 44; International trademark device mark HOTEL F1 No. 524567, dated of May 30, 1998 (renewed), for goods in services in classes 16, 21, 39 and 42; and International trademark device mark M GALLERY MEMORABLE HOTELS BY ACCOR No. 1089193 designating Viet Nam, dated of July 25, 2011, for services in class 43.

The disputed domain names were registered on the following dates:

<accorthesebel.com> registered on March 19, 2015;

<accorvillas.com> registered on March 18, 2015;

<accorluxuryhotels.com> registered on March 18, 2015;

<accorluxuryresorts.com> registered on March 18, 2015;

<accorluxuryvillas.com> registered on March 18, 2015;

<accorproperty.com> registered on March 19, 2015;

<accormgallery.com> registered on March 18, 2015;

<accorgrandmercure.com> registered on March 19, 2015;

<accorpullman.com> registered on March 18, 2015;

<pullmanaccor.com> registered on March 19, 2015;

<accorsofitel.com> registered on March 18, 2015;

<sofitelaccor.com> registered on March 19, 2015;

<accorsuitenovotel.com> registered on March 19, 2015;

<accornovotel.com> registered on March 19, 2015;

<mgalleryaccor.com> registered on March 19, 2015;

<suitenovotelhotels.com> registered on March 19, 2015;

<sofitelparis.com> registered on March 19, 2015;

<thalassaseaandspa.com> registered on March 18, 2015;

<hotelf1hotels.com> registered on March 19, 2015.

5. Parties' Contentions

A. Complainant

These proceedings are brought against a single Respondent Athena Pham of Hanoi, Viet Nam. According to the WhoIs database the registrant for <accorpullman.com>, <pullmanaccor.com>, <accorsofitel.com>, <sofitelaccor.com>, <accorsuitenovotel.com>, <accornovotel.com>, <mgalleryaccor.com>, <accormgallery.com>, <accorgrandmercure.com>, <accorthesebel.com>, <accorvillas.com>, <accorluxuryhotels.com>, <accorluxuryresorts.com> and <accorluxuryvillas.com> is Athena Pham. The disputed domain names <accorproperty.com>, <hotelf1hotels.com>, <suitenovotelhotels.com>, <sofitelparis.com> and <thalassaseaandspa.com> were registered under privacy but were confirmed by the Registrar DreamHost, LLC as also registered in the name of Athena Pham of Hanoi, Viet Nam. There were some minor differences in the address details although both are in Hanoi, Viet Nam. A different telephone contact was provided in each of the two cases, but the email address for the Respondent was the same. According to the Complainant, on August 27, 2015 the disputed domain names <suitenovotelhotels.com>, <sofitelparis.com>, <thalassaseaandspa.com>, <hotelf1hotels.com> and <accorproperty.com>, which previously resolved to inactive pages, were redirected to "http://hottestnews.info/" on which page the text "Contact: athena.phamm@[...].com" was displayed. According to the Complainant these elements indicated that all the disputed domain names are under the control of the same registrant.

The Complainant owns and operates numerous hotels in various classes and with various target customer groups in multiple jurisdictions including Viet Nam. The Complainant sent various cease and desist letters to the privacy host and the Respondent but without meaningful responses. Subsequently the Complainant issued the present UDRP proceedings.

Further according to the Complainant, each of the disputed domain names is confusingly similar to a trademark registered by the Complainant. The disputed domain names in each case reproduce in their entirety either one or two trademarks registered by the Complainant, or a trademark combined with a generic term, including the term "hotel" in some cases. According to the Complainant, previous UDRP panels have considered the trademarks GRAND MERCURE, PULLMAN, SOFITEL, NOVOTEL and THALASSA to be well known or famous marks. Further, according to the Complainant, it is well established that the inclusion of a registered trademark in its entirety results in a confusingly similar domain name. The inclusion of generic terms, and in particular such terms as refer to the field of activity of the Complainant, is not of a nature to dispel any likelihood of confusion. The Complainant contends that it is likely that the disputed domain names could mislead Internet users into thinking that they are, in some way, associated with the Complainant.

The Complainant asserts that the Respondent has no prior rights or legitimate interests in the disputed domain names. The registration of the Complainant's trademarks preceded the registration of the disputed domain names by many years and the latter are so similar as to render it impossible for the Respondent to contend that it intended to develop a legitimate activity based on the disputed domain names. Further, according to the Complainant, the Respondent is not commonly known by the names "Accor", "Mgallery", "Grand Mercure", "Pullman", "Sofitel", "Novotel", "Suite Novotel", "Hotel F1" and "Thalassa", nor in any way affiliated with the Complainant, nor authorized or licensed to use the trademarks ACCOR, MGALLERY, GRAND MERCURE, PULLMAN, SOFITEL, NOVOTEL, SUITE NOVOTEL, HOTEL F1 and THALASSA, or to seek registration of any domain name incorporating such marks.

Further, according to the Complainant, the Respondent did not demonstrate use of, or demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names <suitenovotelhotels.com>, <sofitelparis.com>, <thalassaseaandspa.com>, <hotelf1hotels.com>and <accorproperty.com> resolve to inactive pages, whereas the disputed domain names <accorthesebel.com>, <accorvillas.com>, <accorluxuryhotels.com> <accorluxuryresorts.com>, <accorluxuryvillas.com>, <accormgallery.com> <accorgrandmercure.com>, <accorpullman.com>, <pullmanaccor.com>, <accorsofitel.com>, <sofitelaccor.com>, <accorsuitenovotel.com>, <accornovotel.com> and <mgalleryaccor.com> redirect to "http://hottestnews.info/" where only the email address of the Respondent Athena Pham is provided.

The inclusion of more than one trademark in some of the disputed domain names casts even more doubt on the legitimacy of the registrations according to the Complainant.

The Complainant further contends that in light of the reputation of the Complainant and its trademarks, the Respondent's reproduction of several trademarks of the Complainant, including allegedly well-known trademarks, in the disputed domain names clearly proves that Respondent was aware of the existence of the Complainant's trademarks. Further, the Complainant maintains that bad faith has previously been found to exist where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. In the circumstances, the Respondent either knew or should have known of the Complainant's trademark rights and nonetheless registered the disputed domain names including trademarks in which it held no rights or interests.

According to the Complainant, the Respondent has also registered numerous domain names incorporating the trademarks of its competitors, thus demonstrating absence of good faith and nothing other than an intention to sell the disputed domain names to the Complainant for profit.

In terms of use in bad faith the Complainant contends that in the absence of any license or permission to use widely known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed. Where the relevant disputed domain name resolves to an inactive page, passive holding can amount to bad faith, as has repeatedly been decided by UDRP panels. Reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.

Finally, according to the Complainant, it is likely that the Respondent registered the disputed domain names to prevent the Complainant from so using its trademarks, which constitutes evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant contends that all the disputed domain names in this matter are controlled by one and the same single entity. It is the case that all the disputed domain names incorporate one or more of the Complainant's trademarks, either with or without a generic term that reflects the nature of the Complainant's activity or is in some way readily associated with the hotel business. There is thus a pattern of similarity between the disputed domain names. Further, the Registrar DreamHost, LLC disclosed in its correspondence to the Center that the registrant of the disputed domain names protected by a privacy service has the same name and email address, and also has an address in Hanoi, Viet Nam. Further, the Complainant contends that the Respondent has engaged under the name Athena Pham in similar conduct of registering domain names incorporating widely known trademarks belonging to other actors in the hotel accommodation sector. The Respondent has not filed any response to the Complainant's contention relating to any or only some of the disputed domain names. The disputed domain names were all registered on March 18 or 19, 2015, which is unlikely to have occurred coincidentally at the instigation of two different persons who nonetheless happened to have the same name and email and live in Hanoi, Viet Nam.

In the circumstances, the Panel holds that the registrant of all the disputed domain names in this matter is one and the same person.

A. Identical or Confusingly Similar

None of the disputed domain names is identical to any one of the registered trademarks of the Complainant. However, each of the disputed domain names incorporates one or more of the trademarks of the Complainant in its entirety. Where generic terms are also included they tend to evoke the hotel business of the Complainant or be readily associated with that business. In any case the simple inclusion of any generic term with a distinctive trademark in a disputed domain name is rarely inconsistent with a finding of confusing similarity. In the present case, the trademarks concerned are widely known to Internet users in a commonly known consumer business. Any one of the disputed domain names is apt to suggest to an Internet user that there is a legitimate connection between a website to which it resolves and the Complainant. Such a connection does not in fact exist.

In the circumstances, the Panel holds that each of the disputed domain names is confusingly similar to one or more of the registered trademarks of the Complainant.

B. Rights or Legitimate Interests

The disputed domain names have either remained inactive or resolved to a webpage where the Respondent's email address is provided. There has been no use of any of the disputed domain names that can establish any basis for a contention that the Respondent has some legitimate interests or rights in the disputed domain names. The Respondent did not in correspondence or filing make any case concerning rights or legitimate interests, and mere passive holding of a disputed domain name does not vest rights in a registrant. The Respondent is not known by any of the disputed domain names, nor does it own any relevant trademark or business name rights. The Respondent has not been authorized by the Complainant to use any of the Complainant's trademarks in any way shape or form.

In the circumstances, the Panel holds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

Each of the disputed domain names incorporates one or more of the Complainant's distinctive trademarks in its entirety. At the time of registration the various trademarks of the Complainant were well established in the hotel sector in numerous jurisdictions including in Viet Nam. It is apparent from most of the disputed domain names that the Respondent was well aware of the goodwill attaching to the various trademarks in the hotels accommodation sector, and sought registration deliberately with such established reputation in mind. The disputed domain names include either generic terms relevant to the hotels business, or two of the Complainant's distinctive trademarks. None of the combinations result in a totality with a distinct or different meaning other than evoking the reputation of the Complainant.

It appears likely that the Respondent intended to derive some financial gain from the registration of the disputed domain names relevant to the Complainant's business and incorporating various of its trademarks. It is apparent that Internet users would be misled into thinking that the disputed domain names were connected with the legitimate business of the Complainant.

The provision of an email address at relevant websites suggests that the Respondent intended to make itself available for some transaction with a trademark owner whereby it could benefit from its unauthorized registration of one or more domain names incorporating that party's trademark(s).

In the circumstances, the Panel holds that the disputed domain names were registered and are 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 following disputed domain names be cancelled: <accorgrandmercure.com>, <accorluxuryhotels.com>, <accorluxuryresorts.com>, <accorluxuryvillas.com>, <accormgallery.com>, <accornovotel.com>, <accorproperty.com>, <accorpullman.com>, <accorsofitel.com>, <accorsuitenovotel.com>, <accorthesebel.com>, <accorvillas.com>, <hotelf1hotels.com>, <mgalleryaccor.com>, <pullmanaccor.com> and <sofitelaccor.com>.

Further, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sofitelparis.com> be transferred to the Complainant SoLuxury HMC, and that the disputed domain names <suitenovotelhotels.com> and <thalassaseaandspa.com> be transferred to the Complainant Accor.

William A. Van Caenegem
Sole Panelist
Date: April 25, 2016