WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor SA and SoLuxury HMC v. Xinqian Zhang, Xinqian Tyndall

Case No. D2017-1722

1. The Parties

The Complainants are Accor SA (the “First Complainant”) and SoLuxury HMC (the “Second Complainant”) of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Xinqian Zhang / Xinqian Tyndall of Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <pullman-beijngxingji.com>, <pullman-shanghaizhongxing.com>, <pullman‑zx.com>, <sofitel-beijingwanda.com>, <sofitel-shanghaisheshan.com> and <sofitelsheshan.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that the persons named as the Respondent in the Complaint are listed as the registrant of the disputed domain names 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 September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent did not submit any response. Accordingly, on October 18, 2017, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 31, 2017. 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 Complainants are part of the Accor corporate group, headquartered in France, which operates more than 4,000 hotels with approximately 570,000 rooms in 95 countries worldwide. The group operates a range of hotel brands including Pullman and Sofitel. In China, the group operates 29 Pullman hotels and 21 Sofitel hotels, including the “SOFITEL Shanghai Sheshan Oriental” and the “SOFITEL Wanda Beijing”. The First Complainant has registered multiple trademarks including international trademark registration number 1197984 for PULLMAN, registered from November 28, 2013, and specifying hotels and other services in class 43. The Second Complainant has registered multiple trademarks including international trademark registration number 863332 for SOFITEL, registered from August 26, 2005, and specifying administrative management of hotels, tourism and travel agencies, hotels services and other services in classes 35, 39 and 43. Those trademark registrations remain effective. The Complainants registered domain names including <pullmanhotels.com>, <pullmanhotels.cn>, <sofitel.com> and <sofitel.cn> between 1997 and 2007, that they use in connection with their respective official websites, which provide information about them and their hotels.

The two nominally different domain name registrants are each an individual located in China. For the reasons set out in Section 6.1 below, they are referred to collectively as “the Respondent”.

Four of the disputed domain names (<pullman-beijngxingji.com>, <pullman-shanghaizhongxing.com>, <sofitel-beijingwanda.com> and <sofitel-shanghaisheshan.com>) were registered on February 29, 2016; the other two disputed domain names (<pullman-zx.com> and <sofitelsheshan.com>) were registered on March 24, 2016. The disputed domain names resolve to hotel websites in Chinese that display either the Complainants’ “PULLMAN Hotels and Resorts” logo or the Complainant’s “SOFITEL Luxury Hotels” logo. The websites offer hotel booking services with prices displayed in Chinese yuan.

5. Parties’ Contentions

A. Complainant

The disputed domain names are each confusingly similar to the Complainant’s PULLMAN or SOFITEL mark. Each disputed domain name reproduces one of those marks in its entirety, together with geographical terms or generic terms or both, separated by a hyphen. The mere adjunction of a generic Top-Level Domain suffix (“.com”) is irrelevant to confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with the Complainants in any way nor has he been authorized by the Complainants to use and register their trademarks or to seek registration of any domain names incorporating such trademarks. The Respondent is not known by the name of “Pullman” or “Sofitel”. The Respondent has no prior rights or legitimate interests – the Complainants’ trademarks predate the disputed domain name registrations by a matter of years. The disputed domain names resolve to fraudulent websites that imitate the Complainants’ websites but in Chinese version, which is not a bona fide offering of services. The Respondent is associated with over 1,000 domain names, most of which replicate famous trademarks.

The disputed domain names were registered and are being used in bad faith. It is implausible that the Respondent was unaware of the Complainants when he registered the disputed domain names. The Complainants are well-known throughout the world, including in China. The disputed domain names indicate knowledge of specific hotels operated by the Complainants. The Respondent’s websites reproduce the Complainants logos and provide information about its hotels. The Respondent has done everything to make his websites look official and therefore divert Pullman and Sofitel customers for commercial gain.

B. Respondent

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

6. Discussion and Findings

6.1 Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group as the Second Complainant is a wholly owned subsidiary of the First Complainant. The First Complainant owns the PULLMAN trademarks while the Second Complainant owns the SOFITEL trademarks. The Panel finds that they have a common grievance against the persons named as the disputed domain name registrants and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.2 Multiple Domain Name Registrants

The Complaint initiates disputes in relation to two nominally different domain name registrants. The disputed domain names are variously registered in the name of “Xinqian Zhang” or “Xinqian Tyndall”. However, pursuant to paragraph 10(e) of the Rules, the Complainant requests consolidation of the disputes against the disputed domain name registrants. The domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant alleges that the disputed domain name registrants are under common control or the same person who has registered the disputed domain names in different names in an attempt to evade his responsibilities. The Panel does not consider that paragraph 3(c) of the Rules was intended to enable a person in such circumstances to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain name registrants share the same given names, the same email address and basically the same street address, which is clearly fictitious. However, the two disputed domain names registered on March 24, 2016 show a different surname (in English rather than Chinese), a different telephone number and a different city name in their street addresses, but the city names are in any case clearly false. The disputed domain names follow a pattern of referring to hotel names. The websites to which they resolve operate in the same manner; in fact, two disputed domain names with nominally different registrants resolve to what appears to be the same website (purportedly for the Sofitel Shanghai Sheshan Oriental). In the circumstances, the Panel is persuaded that the disputed domain name registrants are under common control or indeed the same person.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the disputed domain name registrants in a single proceeding.

6.3 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the PULLMAN and SOFITEL trademarks.

Each of the disputed domain names incorporates the Complainant’s PULLMAN or SOFITEL trademark in its entirety as its initial element. Five disputed domain names also include a hyphen that separates the trademark from the other elements. The hyphens do not dispel confusing similarity with the trademarks; in fact, they make the trademarks even more clearly recognizable within the relevant disputed domain names.

Four of the disputed domain names contain a geographical term or an obvious misspelling of one, either “Beijing”, “Beijng” or “Shanghai”. As mere geographical terms, these are not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant’s trademarks. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

All of the disputed domain names contain other words or an abbreviation, either “Sheshan” (a transcription of 佘山), “Xingji” (a transcription of 兴基), “Wanda” (a transcription of 万达), “Zhongxing” (a transcription of 中星) or its abbreviation “zx”. None of these words diminishes the confusing similarity of the disputed domain names with the Complainant’s trademarks, which remain clearly recognizable within the disputed domain names. If anything, these additional words increase the confusing similarity because each one, like the geographical terms, is part of the Chinese name of an actual hotel operated by the Complainant under the corresponding brand.

All disputed domain names also contain the generic Top-Level Domain (“gTLD”) suffix “.com”. However, a gTLD suffix may generally be disregarded in the comparison of a domain name with a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the Panel has already found that the disputed domain names are confusingly similar to one of the Complainant’s trademarks. The Complainant informs the Panel that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks or to seek registration of any domain names incorporating such trademarks. Yet the disputed domain names are used in connection with websites that are presented as the Complainant’s official websites and offer hotel booking services at particular hotels operated by the Complainant. The Panel finds that that is not a bona fide offering of goods or services.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Xinqian Zhang” or “Xinqian Tyndall”, which does not resemble “Pullman” or “Sofitel” or any other word in the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names.

As regards the third circumstance, the disputed domain names are being used in connection with websites that operate on a commercial basis. That is not a legitimate noncommercial or fair use.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

As regards registration, the disputed domain names were registered years after the Complainant obtained its trademark registrations, including in China where the Respondent operates. The disputed domain names wholly incorporate the Complainant’s PULLMAN or SOFITEL trademarks and combine them with words that indicate an awareness of the names of particular hotels operated by the Complainant. The websites to which the disputed domain names resolve display the name of the corresponding hotel operated by the Complainant and the Complainant’s logo for that brand of hotel. In these circumstances, the Panel has reason to find that the Respondent was aware of the Complainant and its trademarks at the time that it registered the disputed domain names and registered the disputed domain names in bad faith.

As regards use, the disputed domain names all resolve to websites that are presented as official websites of the Complainant and falsely purport to offer booking services for particular hotels operated by the Complainant, when they are actually unaffiliated with the Complainant. In these circumstances, the Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with one or other of the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of services on his websites, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 names <pullman-beijngxingji.com>, <pullman-shanghaizhongxing.com>, <pullman-zx.com>, <sofitel-beijingwanda.com>, <sofitel-shanghaisheshan.com> and <sofitelsheshan.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: November 2, 2017