WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Hoang Quoc Phuong

Case No. D2018-1505

1. The Parties

The Complainant is Accor of Issy les Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is Hoang Quoc Phuong of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <pullmanphuquoc.com> (the "Disputed Domain Name") is registered with P.A. Viet Nam Company Limited (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2018. On July 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 9, 2018, 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 Registrar also informed that the language of the registration agreement was Vietnamese. On July 11, 2018, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on July 12, 2018, in which it requested that English be the language of the proceeding. The Respondent requested that Vietnamese be the language of the proceeding on July 13 and 15, 2018.

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 Vietnamese of the Complaint, and the proceedings commenced on July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Respondent did not submit any formal response. The Center notified the Parties of the Commencement of Panel Appointment Process on August 13, 2018.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on August 23, 2018. 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 3,700 hotels in 92 countries worldwide and over 450,000 rooms, from economy to upscale. The group includes hotel chains, such as Pullman, Novotel, Grand Mercure and Ibis.

According to the Complainant, a 5-star international hotel will be opening on the tropical island of Phu Quoc, Viet Nam under the name "Pullman Phu Quoc Resort".

The Complainant owns numerous trademark registrations around the world, including PULLMAN trademarks under International Registration Nos. 502625 and 1188855, designating Viet Nam, registered in Classes 29, 30, 33, 42 and 43 on May 5, 1986 and October 10, 2013, respectively.

In addition, the Complainant owns the domain name <pullmanhotels.com>, which was registered on March 21, 1999.

The Respondent registered the Disputed Domain Name on December 13, 2016. As of the date of this Decision, the Disputed Domain Name is redirecting to the website "www.mekong.shop", on which the advertisement "domain is for sales" is displayed prominently.

The Complainant sent a Cease and Desist letter to the Respondent on January 10, 2017 and two reminders on January 17 and 24, 2017, requesting the transfer of the Disputed Domain Name free of charge. On January 24, 2017, the Respondent replied that he registered the Disputed Domain Name in the first place, so the Complainant's letter did not make sense to him and he invited the Complainant to a business deal.

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 PULLMAN trademark enjoys a worldwide reputation and is protected in Viet Nam under International Registration Nos. 502625 and 1188855, registered in Classes 29, 30, 33, 42 and 43 on May 5, 1986 and October 10, 2013, respectively. In addition, the Complainant owns the domain name <pullmanhotels.com>, which was registered on March 21, 1999. The Complainant's PULLMAN trademark has been recognized as well-known in an earlier UDRP decision (Accor v. Yin Wei Fen, WIPO Case No. 2012-0553).

Secondly, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to a mark owned by the Complainant by arguing that:

(a) the Disputed Domain Name reproduces entirely the well-known trademark PULLMAN; and

(b) The addition of the geographical term "Phu Quoc" could not dispel any likelihood of confusion. On the contrary, this geographical term misleads the Internet users into thinking that the Disputed Domain Name would direct them to the Complainant's website and services relating to the Complainant's new hotel "Pullman Phu Quoc Resort", which is under construction. Therefore, the likelihood of confusion is heightened.

Finally, the Complainant submits that the addition of the generic Top-Level Domain ("gTLD") 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 PULLMAN preceded the registration of the Disputed Domain Name for years. Moreover, the Disputed Domain Name is so similar to the famous trademark of the Complainant, that the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the Disputed Domain Name.

Secondly, the Respondent is not commonly known by the name "Pullman", in any way affiliated with the Complainant, nor authorized or licensed to use the trademark PULLMAN, or to seek registration of any domain name incorporating said mark. In previous decisions, 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).

Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name due to the Respondent's intention for commercial gain through the offer for sale of the Disputed Domain Name on the webpage.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

(a) The Disputed Domain Name was registered in bad faith

The Complainant submits that the PULLMAN mark is well known throughout the world including Viet Nam, so it is unlikely that the Respondent was not aware of the Complainant's proprietary rights when he registered the Disputed Domain Name. In addition, a quick trademark search on "Pullman" or a simple search via Google or any other search engine using the keywords Accor and Pullman would have revealed to the Respondent the existence of the Complainant and its trademark.

Further, the Respondent's reproduction of the trademark PULLMAN in its entirety in the Disputed Domain Name, the association of the Complainant's trademark to the geographical term "Phu Quoc" referring to the Complainant's hotel "Pullman Phu Quoc" in construction prove that the Respondent was aware of the existence of the Complainant's trademark.

Previous 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.

(b) The Disputed Domain Name is being used in bad faith

The Complainant contends 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 web pages set up by the Respondent.

Secondly, in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.

Further, the offer for sale of the Disputed Domain Name in excess of the out of pocket expenses of the Respondent in registering the Disputed Domain Name can be compelling evidence of bad faith registration and use.

Finally, it is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the Disputed Domain Name. According to previous UDRP decisions, this type of conduct constitutes evidence of the Respondent's bad faith.

Therefore, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issues

Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated July 11, 2018, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.

On July 12, 2018, the Complainant submitted the amended Complaint, requesting that English be the language of the proceeding.

On July 13 and 15, 2018, the Respondent submitted a request for Vietnamese to be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the nationality of the Parties;

(ii) the fact that the Complainant, a French entity, does not appear to be able to communicate in Vietnamese; and

(iii) the fact that the Respondent is obviously capable of understanding and using English as he shows a rather good command of English in the email dated January 24, 2017 replying to the Complainant's cease and desist letter, and the website at the disputed domain name uses English words, such as "domain is for sales", "hotline", and "email".

Further, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. Hence, in the interest of fairness to both Parties as well as the Panel's obligation under paragraph 10(c) of the Rules, which provides that "the Panel shall ensure that the administrative proceeding takes place with due expedition", the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English.

The Respondent's Failure to Reply to the Complainant's Contentions

The Respondent's failure to reply to the Complainant's contentions 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 fact that the Respondent didn't reply to the contentions in the Complaint.

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 PULLMAN, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer hotel services worldwide.

Second, the Disputed Domain Name comprises the Complainant's PULLMAN mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix "phuquoc", which is written with accent marks as "Phú Quốc" in Vietnamese and indicates a geographical location of Phu Quoc island in Viet Nam. Thus, this suffix should be considered as a geographical term in this instant case and the Panel finds that "pullman" remains the dominant element in the Disputed Domain Name. It is well established that the addition of geographical terms (such as "phuquoc") to a trademark does not prevent confusing similarity, thus, in the Panel's view, the addition of the said suffix does not dispel the risk of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8: "Where 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. The nature of such additional term(s) may however bear on assessment of the second and third elements."

Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD ".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 PULLMAN trademark, 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. Paragraph 4(c) of the Policy reads:

"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 consensus of previous 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 provide evidence to the contrary. See WIPO Overview 3.0, section 2.1. In this present case, the Panel finds that the Respondent has failed to meet that burden since the Respondent did not reply to the Complainant's contentions.

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 and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the PULLMAN trademark.

The Disputed Domain Name is not used for offering any goods or services, but resolves to a website, on which the statement "Domain is for sales" is prominently presented. Although the Disputed Domain Name is not explicitly offered for sale, the presentation of the statement "Domain is for sales" on that website may implicate an offer for sale of the Disputed Domain Name, together with other domain names. In the Panel's view, using the Disputed Domain Name, which comprises the Complainant's well-known mark PULLMAN, to resolve to a website offering for sale domain names, implicitly including the Disputed Domain Name, to third parties is not evidence of a bona fide offering of goods or services under the Policy. Instead, the implicit offer for sale of the Disputed Domain Name demonstrates that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent appears to have full knowledge of the PULLMAN trademark and had an intention to ride on the good reputation of the Complainant to attract Internet users to its website and offer for sale the Disputed Domain Name for profit.

Moreover, 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.

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. Paragraph 4(b) of the Policy reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 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 your web site or location or of a product or service on your web site or location".

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of "registration and use of a domain name in bad faith".

The Panel finds that the Complainant has put forth sufficient 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, has not refuted the Complainant's contentions.

The Panel further finds that the Complainant's PULLMAN trademark has been registered in numerous countries. The Complainant's PULLMAN trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. Besides functioning as a trademark, PULLMAN is also being used in the Complainant's domain name <pullmanhotels.com>. The Complainant's PULLMAN trademarks and domain name all well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the PULLMAN trademark in its entirety, adding only the geographical term "phuquoc". The word "pullman" is, in the Panel's opinion, neither descriptive nor generic of the Complainant in general and of its hotel services in particular. Given the extensive use of the PULLMAN trademarks 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. Further, due to the fact that a new hotel of the Complainant is being built in Phu Quoc island, Viet Nam, the Panel is of the view that the Respondent obviously knew of the Complainant and its PULLMAN trademarks when he registered the Disputed Domain Name, which is a combination of the Complainant's PULLMAN trademark and the geographical term "phuquoc". The Panel considers the registration of the Disputed Domain Name as an attempt by the Respondent as to take advantage of the Complainant's goodwill.

At the time of the filing of the Complaint and on the date of this decision, the website under the Disputed Domain Name is used to resolve to a website implicitly offering for sale of the Disputed Domain Name. This offer for sale has been continued since before the notification by the Center to the Respondent of this proceeding. The Panel further notes that the Respondent, in response to the Complainant's cease and desist letter on January 10, 2017, denied the transfer of the Disputed Domain Name free of charge and invited the Complaint to a business deal. With the said facts, the Panel opines that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it, either to the Complainant or any third parties, for a commercial gain. This is indicative of bad faith under paragraph 4(b)(i) of the Policy in the Panel's view.

Further, as the Disputed Domain Name comprises the Complainant's well-known PULLMAN 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 "pullman" may end up on the web page 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, where without any consent from the Complainant, 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 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 <pullmanphuquoc.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: September 6, 2018.