WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. Whois Agent, Domain Protection Services, Inc. / Nguyen Trong Hoa, Home
Case No. D2020-1969
1. The Parties
The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / Nguyen Trong Hoa, Home, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <ibishotelvungtau.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 6, 2020.
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 August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2020.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 21, 2020. 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 France-based company, which is active in the hotel business for more than 45 years. It is a world leader in economic and mid-scale hotels and a major player in upscale and luxury hospitality services. According to what the Complainant established, it operates more than 4,500 hotels in 110 countries worldwide and over 700,000 rooms, from economy to upscale. The group includes hotel chains, such as Ibis, Novotel, Grand Mercure and Pullman.
According to the Complainant, currently, there are 1,218 Ibis hotels in over 67 countries around the world, which are generally close to city centers, airports or railway stations.
The trademarks IBIS have been registered for hotel services in a variety of countries, including in Viet Nam, where the Respondent resides, under International Registration Nos. 541432 for IBIS, registered on July 17, 1989, No. 431254 for HOTEL IBIS, registered on June 17, 1977, and No. 1097369 for IBIS STYLES HOTELS, registered on September 13, 2011.
The Complainant also registered two domain names <ibis.com> and <ibishotel.com> on June 11, 1993 and August 19, 1997 respectively.
The Respondent registered the Disputed Domain Name <ibishotelvungtau.com> on November 9, 2019. As of the date of this Decision, the Disputed Domain Name is resolving to an active website, which promotes the hotel services under the name “IBIS HOTEL vung tau”.
The Complainant sent a demand letter to the Respondent via the Registrar on November 19, 2019 and several reminders, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the demand letter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Firstly, the Complainant contends that the Complainant’s IBIS trademark enjoys a worldwide reputation and is protected in Viet Nam under International Registration Nos. 541432, 431254 and 1097369. The Complainant’s IBIS trademark also has been recognized as well known in earlier UDRP decisions (Accor, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Accor v. Leland M. Rutla, WIPO Case No. D2015-0912).
Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to the well-known IBIS Trademark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered IBIS Trademark, and the addition of the generic term “hotel” and geographic term “vungtau”, could not dispel any likelihood of confusion. On the contrary, these terms increase the likelihood of confusion since they make direct reference to the Complainant’s field of activity and its hotel “Ibis Styles Vung Tau” in Viet Nam.
Finally, the Complainant submits that the addition of the Top-Level Domain (“TLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
Firstly, the registration of the trademark IBIS preceded the registration of the Disputed Domain Name for years. Moreover, the Disputed Domain Name is so similar to the well-known trademark of the Complainant, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Disputed Domain Name.
Secondly, the Respondent is not commonly known by the name “Ibis”, is not in any way affiliated with the Complainant, nor authorized or licensed to use the trademark IBIS, or to seek registration of any domain name incorporating the said mark. In previous UDRP decisions, UDRP panels found that in the absence of any license or permission from the complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
In addition, the website under the Disputed Domain Name does not accurately disclose its relationship with the trademark owner, and reproduces photographs of the Complainant without authorization, to perpetuate the false impression of an official commercial relationship between such website and the Complainant. This false impression is amplified by the Respondent’s statement on the website that “© 2020 Accor trademark is a globally renowned group. You are invited to book a room at Ibis Styles Vung Tau”.
Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers and taking unfair advantage of the IBIS trademark of the Complainant.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
Registration in bad faith
The Complainant submits that the IBIS mark is well known throughout the world including Viet Nam, so it is unlikely that the Respondent was not aware of the Complainant’s intellectual property rights when it registered the Disputed Domain Name. In addition, a quick trademark search on Ibis or a simple search via Google or any other search engine using the keyword Ibis would have revealed to the Respondent the existence of the Complainant and its trademark.
Secondly, the Disputed Domain Name incorporating the Complainant’s trademark IBIS in its entirety, with the addition of the terms “hotel” and “Vung Tau” demonstrates that the Respondent registered the Disputed Domain Name based on the attractiveness of the Complainant’s trademarks, and in order to divert Internet traffic to its illegitimate website. Previous UDRP panels have established that knowledge of the complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration.
Furthermore, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.
Finally, although the Complainant sent a cease and desist letter to the Respondent and several reminders, the Respondent neither tried to defend its rights nor stated any valid arguments to justify the registration of the Disputed Domain Name.
Use in bad faith
The Complainant contends that in the absence of any license or permission from the Complainant to use such well-known trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.
Secondly, since the Disputed Domain Name is directed to a webpage falsely portrayed as the Complainant’s official website, the Complainant submits that the Respondent intends to deceive consumers by taking unfair advantage of the goodwill and reputation of the Complainant’s trademark IBIS.
Additionally, the Complainant submits that because the Disputed Domain Name is confusingly similar to the Complainant’s trademark, many Internet users attempting to visit the Complainant’s website have ended up on the webpages set up by the Respondent.
Finally, there might be a risk that the Respondent is engaged in a phishing scheme since an email server has been configured on the Disputed Domain Name.
With the said arguments, the Complainant requests that the Disputed Domain Name <ibishotelvungtau.com> be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to IBIS, well before the Disputed Domain Name was registered.
Second, the Disputed Domain Name comprises the Complainant’s trademark IBIS, in which the Complainant has exclusive rights. The differences between the Disputed Domain Name and the Complainant’s trademark are the addition of the suffixes “hotel” (which is a dictionay term) and “vungtau” (which is a geographic term and can be written with tone marks as “vũng tàu” in Vietnamese to indicate the name of Vung Tau City of Viet Nam).
The Panel finds that the Complainant’s IBIS trademark is clearly recognizable in the Disputed Domain Name. It is well established that the addition of a dictionary term (such as “hotel”) and a geographic term (such as “vungtau”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffixes does nothing to distinguish the Disputed Domain Name from the trademark IBIS, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Accor v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2816; Trivago N.V. v. Mediatextual, S.L. B52516028, WIPO Case No. D2019-1873; Accor v. Hoang Quoc Phuong, WIPO Case No. D2018-1505).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the TLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark IBIS, and the first element of the Policy is established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights for IBIS or similar in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark IBIS.
A reseller or distributor may be making a bona fide offering of goods or services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), including:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the website itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant, or the lack thereof. Furthermore, the website under the Disputed Domain Name contains the Complainant’s trademark IBIS as well as its hotel images.
In addition, the website under the Disputed Domain Name has stated that “Khách Sạn Ibis Styles Vũng Tàu thuộc thương hiệu Ibis Styles của tập đoàn Accor” (in English: “Ibis Style Vung Tau Hotel is a member of the brand Ibis Styles of Accor Corporation”) and placed the copyright claim “© 2020 Thương hiệu thuộc tập đoàn Accor danh tiếng toàn cầu” (in English: “© 2020 The brand of worldwide renowned Accor Corporation”). These indication and copyright claim may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.
With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the IBIS trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel further finds that the Complainant’s IBIS trademarks have been registered in numerous countries. The Complainant’s trademarks have been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.
The Disputed Domain Name comprises the trademark IBIS in its entirety, adding only the dictionary term “hotel” and the geographic term “vungtau”. Given the extensive use of the IBIS trademark for hotel services by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its IBIS trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s good will.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to a website offering the hotel services branded with the Complainant’s trademark IBIS. In addition to the adoption of the Complainant’s trademark IBIS as a uniquely distinctive part in the Disputed Domain Name, the Respondent has used the Complainant’s trademarks IBIS, hotel images on the website under the Disputed Domain Name, and falsely represented itself as the Complainant by the statement of “Khách Sạn Ibis Styles Vũng Tàu thuộc thương hiệu Ibis Styles của tập đoàn Accor” (in English: “Ibis Style Vung Tau Hotel is a member of the brand Ibis Styles of Accor Corporation”) and the copyright claim “© 2020 Thương hiệu thuộc tập đoàn Accor danh tiếng toàn cầu” (in English: “© 2020 The brand of worldwide renowned Accor Corporation”).
Further, as the Disputed Domain Name comprises the Complainant’s well-known IBIS mark as the unique distinctive element, the Panel agrees with the Complainant’s argument that many Internet users attempting to visit the Complainant’s website through a search for “ibis” may end up on the webpage set up by the Respondent. In the Panel’s view, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The diversion of Internet traffic from the Complainant’s site to the Respondent’s site supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
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 <ibishotelvungtau.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: October 4, 2020