WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accor v. GMO-Z.com RUNSYSTEM JSC / Ngo Thuy Giang, Thuy Giang
Case No. D2021-4141
1. The Parties
The Complainant is Accor, France, represented by Dreyfus & associés, France.
The Respondent is GMO-Z.com RUNSYSTEM JSC, Viet Nam / Ngo Thuy Giang, Thuy Giang, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <hoiangrandmercure.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2021, 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 December 14, 2021 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 in English on December 17, 2021.
On December 14, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 16, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2022.
The Center appointed Teruo Kato as the sole panelist in this matter on January 20, 2022. 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
According to the Complainant, the Complainant is a leading global hotel operator that owns, manages and franchises hotels, resorts, and vacation properties and is the single largest hospitality company in Europe, and the sixth largest worldwide.
The Complainant owns, among others, the International Trademark GRAND MERCURE No. 900839, registered on September 29, 2006, covering goods and services in class 43, with multiple designations including Viet Nam.
The disputed domain name was registered on August 2, 2021.
The Respondent is GMO-Z.com RUNSYSTEM JSC / Ngo Thuy Giang, Thuy Giang, whose addresses are given as being in Viet Nam.
According to the Complainant, the disputed domain name <hoiangrandmercure.com> resolved to a website displaying detailed Grand Mercure Hoi An Resort project overview, including Accor Hotels as a partner and the completion date of the project by the end of 2023, and it also displayed the logos GRAND MERCURE and ACCOR owned by the Complainant. At present, however, the disputed domain name resolves to an inactive page.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of the GRAND MERCURE trademark.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s GRAND MERCURE trademark.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark GRAND MERCURE, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar has confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, the Complainant would have to retain specialized translation services at a cost that are likely to be high and that the use of another language other than English in the proceeding would impose a burden on the Complainant.
On December 14, 2021, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by December 19, 2021. The Respondent did not respond to this by this deadline nor later.
On December 20, 2021, the Center informed the Respondent, in both Japanese and English, that the Center has decided, under the circumstances of this case, to: “1) accept the Complaint as filed in English; 2) accept a Response in either English or Japanese; 3) appoint a Panel familiar with both languages mentioned above, if available.” Accordingly, the Panel would have accepted a response in Japanese, but no reply was submitted by the Respondent.
The Panel notes that the webpages to which, according to the Complainant, the disputed domain name resolved contain English words such as “Name”, “Email”, “Call”, “Gym”, “Spa”, “Florence Garden”, “HOTLINE”, “Website” and that no Japanese words were used in such webpages.
In the circumstances, in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of a trademark registration and the Panel is satisfied that the Complainant is the owner of the International Trademark GRAND MERCURE No. 900839, registered on September 29, 2006, covering goods and services in class 43, with multiple designations including Viet Nam.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘info’, ‘.com’, ‘.club’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”) “.com”, the Complainant contends that the disputed domain name contains its trademark GRAND MERCUREin its entirety. The Panel notes that a term “hoian” is inserted immediately before GRAND MERCURE.
In this connection, the Panel notes section 1.7 of the WIPO Overview 3.0 which states that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Panel also notes that, in relation to the insertion of a term “hoian”, section 1.8 of the WIPO Overview 3.0 states that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
In the circumstances, the Panel sees no reason why these established practices should not be applied to the present case and holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).
In the present case, whilst the disputed domain name does not resolve to any active website at present, the Complainant contends that the disputed domain name resolved to a website displaying detailed Grand Mercure Hoi An Resort project overview, including Accor Hotels as a partner and the completion date of the project by the end of 2023, and has submitted documentary evidence to that effect, being snapshots of the purported webpages.
The Complainant also submitted copies of their cease and desist communications by emails, sent by it to certain addresses in Viet Nam, and this includes an email dated November 4, 2021 which contains the excerpts of the webpages, to which the disputed domain name allegedly resolved. The Panel also notes that the Respondent has not responded to the repeated cease and desist emails nor has raised any objection during the course of the present proceedings.
The Complainant further contends with relevant evidence that: (i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not been commonly known by the disputed domain name; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that the Complainant has established a prima facie case. By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on that website or location.
In the present case, the Panel is satisfied that the trademark GRAND MERCURE is well-known. The Panel holds that the Respondent was most likely to have known of the Complainant, its products, and trademarks prior to registering the disputed domain name on August 2, 2021. (See section 3.2.2 of the WIPO Overview 3.0.)
In the present case the Panel is satisfied that “Hoi An” is the name of a well-known city in Viet Nam’s Quang Nam Province which is noted as a UNESCO World Heritage Site since 1999. The Panel takes a note that the additional term “hoian“ in the disputed domain name suggests an attempt to create an impression that the disputed domain name is associated with the Complainant in respect of its operations in the Hoi An region, with an intent to cause confusion in the minds of the visitors to its webpages.
In the circumstances, the Panel holds that the Respondent registered the disputed domain name in bad faith.
As to the use in bad faith, the Panel notes that the Respondent is not currently using the disputed domain name. For the sake of completeness, the Panel considered whether the so-called doctrine of “passive holding” should apply to the present case. In this connection the Panel takes note that section 3.3 of the WIPO Overview 3.0 states:
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Having considered all the evidences in front of the Panel, the Panel is satisfied that the facts of this case are in support of the Complainant’s contentions in respect of the factors (i) to (iv) above, in particular the distinctiveness and widely-known standing of the Complainant’s GRAND MERCURE trademark, and finds no evidence to indicate otherwise. The Panel also notes that no counter-argument has been submitted by the Respondent.
Taking all matters into careful consideration, the Panel holds that the Respondent is also using the disputed domain name in bad faith.
The Panel therefore concludes that the third requirement of the Policy has been met.
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 <hoiangrandmercure.com> be transferred to the Complainant.
Date: February 3, 2022