WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor, SoLuxury HMC v. Nguyen Xuan Thanh

Case No. D2015-0841

1. The Parties

The Complainants are Accor and SoLuxury HMC of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is Nguyen Xuan Thanh of Ha Noi, Viet Nam, self represented.

2. The Domain Names and Registrar

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2015. On May 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 16, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2015. The Center received several communications from the Respondent between May 17, 2015 and June 2, 2015. The Response was filed with the Center on June 15, 2015. The Respondent filed an additional Response on June 16, 2015.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 19, 2015. 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 same economic group, being major players in the hotel business, operating in 92 countries under the brands Pullman, Novotel, Mercure, Sofitel and Ibis.

The Complainants are the owner of several trademark registrations for MERCURE and SOFITEL amongst which are:

- International Trademark Registration No. 403334 for MERCURE registered on December 14, 1973, successively renewed (Annex 9 to the Complaint); and

- International Trademark Registration No. 863332 for SOFITEL registered on August 26, 2005 (Annex 9 to the Complaint).

The disputed domain names <mercure-phuquoc.com>, <mercurephuquoc.com>, <mercure-phuquoc-resort.com>, <mercurephuquocresort.com>, <mercure-sapa.com>, <mercure-sapa-resort.com>, <mercuresaparesort.com>, <mercurevungtau.com>, <sofitel-wellington.com> and <sofitelwellington.com> were registered between August 26, 2014 and October 29, 2014. The disputed domain names <mercure-phuquoc.com>, <mercurevungtau.com>, <mercure-sapa-resort.com>, <mercuresaparesort.com> and <mercure-sapa.com> resolve to inactive web pages. The disputed domain names <mercurephuquocresort.com>, <mercure-phuquoc-resort.com> and <mercurephuquoc.com> resolve to active webpages with pay-per-click advertising related to the Complainants’ hotels. The disputed domain names <sofitel-wellington.com> and <sofitelwellington.com> resolve to active websites where rubber boots appear to be offered for sale, and also contain pay-per-click advertising links relating to the Complainants’ hotels. .

5. Parties’ Contentions

A. Complainant

The Complainants assert that they are major players in the hotel business, being present in 92 countries worldwide under the brands Pullman, Novotel, Mercure, Sofitel and Ibis with more than 3,700 hotels and over 480,000 rooms (Annexes 6 and 7 to the Complaint).

In Viet Nam the Complainants operate the “Sofitel Saigon Plaza”, a luxury hotel located in Ho Chi Minh City as well as the “Mercure Hanoi la Gare” and “Mercure Hoi An Royal” (Annex 7 to the Complaint).

The Complainants further assert that they attempted to solve the matter amicably prior to initiating this administrative proceeding, having sent a cease-and-desist letter to the Respondent, requesting the transfer of the disputed domain names. No amicable settlement could be reached (Annex 8 to the Complaint).

In the Complainants’ point of view the disputed domain names are identical or confusingly similar to their registered and well-known MERCURE and SOFITEL trademarks likely creating confusion amongst Internet users, given that the Complainant’s marks are typically associated with geographical terms and do not provide sufficient distinction between the disputed domain names and the Complainants or their marks.

According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain names given that:

(i) the Respondent has no connection or affiliation with the Complainants and has not received any license or consent, express or implied, to use the Complainants’ trademarks in the disputed domain names or in any other manner;

(ii) the Respondent has no prior rights or legitimate interest in the disputed domain names;

(iii) the Respondent is not commonly known (as an individual, business or other organization) by the MERCURE and SOFITEL trademarks; and

(iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, having not demonstrated use of, or preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

Furthermore, the Complainants assert that in light of the reputation and fame of their trademarks, the Respondent clearly was aware of the existence of the Complainant’s trademarks, with the addition of the expression “resort” to some of the disputed domain names indicating prior knowledge of Complainants’ field of activity and marks.

Moreover, the Complainants argue that some of the disputed domain names resolve to a website in Vietnamese representing the Respondent’s company which sells rain accessories and starfish and others to a website selling boots, thus taking advantage of the Complainants’ goodwill to make profits. The other disputed domain names have been passively held, which can also be characterized as registration and use in bad faith. The Complainants also assert that the Respondent’s activities are preventing the Complainants from using their trademarks in the disputed domain names.

B. Respondent

On May 17, 2015, the Respondent sent a message in English to the Center stating, in summary, that he lives in Hanoi, Viet Nam and had, in 2014, the idea to start a business called “Sofi Tel Wellington” which will be used to “produce fashion anti-water wellington in the future.” The Respondent states that the idea behind the “Sofi Tel Wellington” brand name is told in his story “The Santa Claus and the Little Mermaid” available at “www.nguyentranhuyenmy.com”.

On May 23, 2015, the Respondent sent a second message to the Center, in English, requesting that the proceedings be in Vietnamese, requesting all documents to be translated into Vietnamese as well. The Respondent reiterated similar arguments in emails of May 25 and 28, and June 2, 2015.

On May 25, 2015, the Respondent sent a third email to the Center, in English, in which he explains that the disputed domain names which incorporate the expression “mercure” were registered by him in view of the fact that he “used to pay attention to the stars, especially, Mercury because it is said that Mercury help us to have intelligence” and that his idea was to use such domain names to sell products such as “Phuquoc pearl” or “star fish”.

The Respondent further states that after having registered the disputed domain names he found out that there would be a project in PhuQuoc for a Mercure resort and that he then sent an email offering the respective domain names to the company without any reply.

Moreover, in the Respondent’s view, Mercure is the French term for “Mercury”, a term to which no one should be exclusively entitled. The Respondent also argues that no one should have exclusivity over the geographic terms “Phuquoc”, “Vungtau” and “Sapa”; referring to regions of Vietnam.

On June 15, 2015, the Respondent formally submitted a Response to the Complaint in English.

In his Response, the Respondent reproduces his previous allegations and assertions, mostly stating that Mercure is a common noun which can be used by anyone, asserting that the Complainant’s request for the transfer of the disputed domain names is unacceptable. Furthermore the Respondent states that he is using the disputed domain names <sofitelwellington.com> and <sofitel-wellington.com> to sell fashion clothes – a business unrelated to the Complainants and that therefore the Complaint should be dismissed.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainants:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names, according to paragraph 4(i) of the Policy.

Prior to entering into the merits of the case, however, the Panel has to address the issue of the language of the proceedings.

A. Language of the Proceedings

The Complainants made a request that the language of the proceedings be English, in spite of the fact that the registration agreement is in Vietnamese. The Center accepted the Complaint to be filed in English with which the Panel agrees.

Considering that the Respondent has replied to the Complainant’s cease-and-desist letter as well as to the UDRP Complaint in English, he shows to have knowledge and capability of understanding English. Specific testimony to this is his web page “www.nguyentranhuyenmy.com” where the tale “The Santa Claus and the Little Mermaid” he claims to have written is made available.

Furthermore all essential procedural communications sent by the Center were sent both in English and in Vietnamese.

In view of the above, this Panel finds that translating the Complaint and its annexes into Vietnamese would create an unnecessary and unjustified burden on the Complainants, thus accepting the Complainants’ request for English to be the language of the proceedings.

B. Identical or Confusingly Similar

The Complainants have established rights in the MERCURE and SOFITEL trademarks, duly registered in various countries, amongst which is Viet Nam where the Respondent is located.

The Panel finds that the disputed domain names <mercure-phuquoc.com>, <mercurephuquoc.com>, <mercure-phuquoc-resort.com>, <mercurephuquocresort.com>, <mercure-sapa.com>, <mercure-sapa-resort.com>, <mercuresaparesort.com>, <mercurevungtau.com>, <sofitel-wellington.com> and <sofitelwellington.com> merely reproduce the Complainants’ famous marks with the addition, in some cases, of the generic term “resort” which relates to the Complainants’ activities, and of geographic terms largely pertaining to locations in Viet Nam.

In this Panel’s view, such additions do not do not provide additional specification or sufficient distinction from the Complainants or their marks and thus the first element of the Policy has been established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:

(i) before any notice 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, in spite of not having acquired 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.

In the present case the Respondent brings two sets of “explanations” for registering the disputed domain names. The first, relating to the group of disputed domain names incorporating the Complainants’ MERCURE trademark is that “Mercure” would be the French equivalent to Mercury and that he, the Respondent, has always “used to pay attention to the stars, especially, Mercury because it is said that Mercury help[s] us to have intelligence”.

Such excuse, in this Panel’s view, is insufficient to establish rights or legitimate interests in the disputed domain names, particularly in view of the selection of geographic terms associated with the term “resort” in some of the disputed domain names. Quite to the contrary, “resort” is clearly linked to the Complainants’ hotel business, which indicates that the Respondent was targeting the Complainants and their famous trademarks when registering the disputed domain names.

Moreover, in view of the express recognition by the Respondent that he became aware of the Complainants’ project to set up a resort in Phuquoc, and his statement that he lives in Hanoi where the Complainants have a Mercure hotel, it is very difficult for the Panel to accept such simple explanation for the selection of the disputed domain names other than to profit from the Complainants’ well established and reputable trademarks.

Furthermore, the Respondent has not shown that he has been commonly known by the disputed domain names, nor that he has acquired trademark rights over the same.

In other words, the feeble excuse presented by the Respondent for his selection of the disputed domain names incorporating the Complainants’ MERCURE trademark cannot be regarded as creating any rights or legitimate interests in these domain names.

As to the disputed domain names incorporating the Complainants’ SOFITEL trademark, the Respondent claims that they refer to his intended fashion anti-water wellington product which would be named after “Sofi Tel Wellington” as per his tale “The Santa Claus and the Little Mermaid” available at “www.nguyentranhuyenmy.com”.

This seems to be an even more unsuitable explanation, in which the Respondent tries to connect the geographic term “Wellington” to its idiomatic use to describe a certain kind of boots for rain, in addition to “Sofitel” deriving from the short form of Sofia, the princess in his tale, and the sale of wellington “through Telephone and Television”.

Such explanation is not convincing in this Panel’s view as to providing any basis for any rights or legitimate interests by the Respondent with respect to those disputed domain names incorporating the Complainants’ SOFITEL trademark.

Furthermore, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent, or the webpage relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests on the part of the Respondent.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainants who are the owners of a trademark relating to the disputed domain names or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainants; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

In this case, the use of five of the disputed domain names in connection with websites that display links or pay-per-click advertisements related to the Complainants’ business characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainants’ consumers or merely earning revenues from the links that solely exist in view of the association with the Complainants’ trademarks.

Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainants’ trademarks, thus capitalizing on the MERCURE and SOFITEL trademarks by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain names are either connected, endorsed or authorized by the Complainants.

As to the five other inactive disputed domain names, past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0 (“WIPO Overview 2.0”) states that “(…) panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. (…)”.

In the present case, the passive holding of five of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:

(i) the Complainants’ trademarks are well-known worldwide, including where the Respondent is located;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;

(iii) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainants’ rights under trademark law.

For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain names.

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 <mercure-phuquoc.com>, <mercurephuquoc.com>, <mercure-phuquoc-resort.com>, <mercurephuquocresort.com>, <mercure-sapa.com>, <mercure-sapa-resort.com>, <mercuresaparesort.com>, <mercurevungtau.com> to be transferred to the Complainant Accor, and the disputed domain names <sofitel-wellington.com> and <sofitelwellington.com> be transferred to the Complainant SoLuxury HMC.

Wilson Pinheiro Jabur
Sole Panelist
Date: June 30, 2015