Orient Express v Nguyen Trong Hanh

WIPO Case No. D2025-2528

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ORIENT EXPRESS v. Nguyen Trong Hanh

Case No. D2025-2528

1. The Parties

The Complainant is ORIENT EXPRESS, France, represented by STRATO-IP., France.

The Respondent is Nguyen Trong Hanh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <orientexpresstrainsapa.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2025.
On June 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 27, 2025, 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 (Registration Private, Domains by Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on June 30,
2025, 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

July 4, 2025.

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 July 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2025.

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The Center appointed David H. Bernstein as the sole panelist in this matter on August 4, 2025. 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 is a French company and an affiliate of the ACCOR Group, a leading global hospitality group. The Complainant is engaged in the provision of high-end passenger railway transportation services and accommodation services, with a history dating back to 1883 when its luxury train service was first launched by Compagnie Internationale des Wagons-Lits (CIWL).

The Complainant is the owner of numerous ORIENT EXPRESS trademarks, which are used in connection with luxury train services and related hospitality offerings. Among the relevant trademark registrations are:

- ORIENT-EXPRESS, European Union Registration No. 000115212, registered on January 5, 2000,

covering classes 16, 35, and 42, valid until April 1, 2026.

- ORIENT EXPRESS, International Registration No. 438114, registered on February 20, 1978, covering classes 12, 39, and 42, valid until February 20, 2028.

The Complainant owns the domain name <orient-express.com>, registered on February 28, 1996, which
resolves to a website at which the Complainant promotes its luxury train services, including the “Orient
Express La Dolce Vita” and the upcoming “Nostalgie-Istanbul-Orient-Express” journeys.

The Respondent is Nguyen Trong Hanh, with an address at Chua Lang Street 84, Hanoi, Viet Nam. The Respondent registered the disputed domain name, <orientexpresstrainsapa.com>, on May 28, 2012. The website to which the disputed domain name resolves promotes train services in Viet Nam. On July 5, 2010,

the Respondent previously sought to register ORIENT EXPRESS V as a trademark in Viet Nam, but that
registration was rejected because it was likely to cause confusion with an earlier International Registration

(No. 619879), held at the time by the Complainant’s predecessor in interest.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for transfer of the disputed domain name.

First, the Complainant is the owner of the above-listed trademark registrations for ORIENT-EXPRESS and <orient-express.com> since 1996. The disputed domain name, <orientexpresstrainsapa.com>, incorporates the entirety of the Complainant’s ORIENT EXPRESS trademark, with the addition of the descriptive and geographic terms “train” and “sapa,” which do not prevent a finding of confusing similarity.

Second, the Respondent has no rights or legitimate interests in the disputed domain name. The the Respondent to use its mark in the disputed domain name. Further, the Complainant avers that the Respondent is “opportunistically taking advantage of the Complainant’s mark for its own commercial purposes when it diverted traffic by creating confusion with the Complainant’s trademark.”

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Third, the Respondent registered and used the disputed domain name in bad faith for two reasons: with the Complainant’s earlier International Registration No. 619879; and (2) the Respondent intentionally sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion, including by painting its trains that are displayed on the website a dark blue color with a white outside roof, just like the Complainant’s trains. The Complainant argues that this tactic allowed the Respondent to benefit from the Complainant's established luxury reputation, resulting in a disruption to the Complainant’s business and a dilution of its brand.
(1) the Respondent was aware of the Complainant’s rights at the time it registered the disputed domain
name, as evidenced by both the “immense fame of the mark,” and by the Respondent’s previous

unsuccessful attempt to register the mark ORIENT EXPRESS with the Viet Nam National Office of

B. Respondent

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


6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to obtain transfer of a domain name, a complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant’s trademark registrations establish that the Complainant owns trademark rights in the mark ORIENT EXPRESS. As the WIPO Overview 3.0 notes in section 1.2, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The disputed domain name reproduces the ORIENT EXPRESS mark in its entirety. The addition of the descriptive word “train” and the geographical word “sapa” does not immunize the disputed domain name from a finding of confusingly similarity. See WIPO Overview 3.0, section 1.8 (“[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.”).

Accordingly, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

To establish that it has rights or legitimate interests in the disputed domain name, a respondent may show, inter alia, that, “before any notice of the dispute,” the respondent used “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” Policy, paragraph 4(c)(i). A use cannot be deemed bona fide, though, if the use at issue constitutes trademark infringement. Nara Aziza Smith v. Vanessa Clarke, WIPO Case No. D2025-1839 (“an infringing use cannot

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be bona fide”); On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen, WIPO Case No. D2021-1714 (“a use cannot be deemed bona fide if the disputed domain names constitute

trademark infringement”).

The record reflects that the Respondent appears to be offering train services in Viet Nam under the name ORIENT EXPRESS. Its website (at which it promotes its trains and sells tickets for its transportation services) makes repeated reference to ORIENT EXPRESS; the trains displayed on the Respondent’s website appear to be branded with the name “Oriental Express.” Thus, it appears that the Respondent was using a name that corresponds to the disputed domain name before any notice of the dispute. The Panel finds, however, that, because this use of ORIENT EXPRESS and “Oriental Express” is infringing of the Complainant’s trademark rights, the use is not a bona fide offering of goods and services, and therefore, the Respondent cannot claim rights or legitimate interests in the disputed domain name.

At the time the Respondent registered the disputed domain name, it was well aware of the Complainant’s rights in the ORIENT EXPRESS trademark. That is because, in 2010, the Respondent’s application to register that mark was refused by the Viet Nam National Office of Intellectual Property because of a likelihood of confusion with the Complainant’s predecessor’s International Registration No. 619879 (which registration had been extended to, inter alia, Viet Nam)[1]. The Respondent nevertheless has persisted in its use of ORIENT EXPRESS to promote its train services. It also appears to be using the name “Oriental Express” on the trains themselves. These facts demonstrate the Respondent’s awareness of the Complainant’s established trademark rights and that the Respondent lacks rights or legitimate interests in the disputed domain name.

[1] Although that particular registration has since expired, the Panel has reviewed the WIPO Madrid trademark database and has

The use by the Respondent of the names ORIENT EXPRESS and “Oriental Express” constitutes trademark infringement, including of the Complainant’s International Registration No. 1301176. The marks are identical or virtually identical to the Complainant’s trademarks and are used in connection with the identical services (luxury train transportation services). Because this use is infringing, it is not a bona fide use and does not give rise to rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As noted above, the Respondent was on direct notice of the Complainant’s trademark rights in the ORIENT This willful infringement of the Complainant’s world-renowned trademark is paradigmatic bad faith because it is highly likely to confuse consumers into believing that the Respondent’s services come from, or are associated with, the Complainant.

EXPRESS mark. It nevertheless registered the disputed domain name (many years after the ORIENT

The Complainant also cites the Respondent’s use of a blue and white color scheme on its trains as further uniquely associated with the Complainant, or that the Respondent’s trade dress is likely to cause confusion. That, however, does not undermine the strength of the Complainant’s arguments in support of a finding of bad faith given the slavish copying of the ORIENT EXPRESS trademark and the Respondent’s use of the domain name in a way that is likely to attract, for commercial gain, Internet users to the Respondent’s web

evidence of bad faith, but the Panel has not been presented with sufficient evidence to accept that argument.

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site, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, or

affiliation.

Accordingly, the Panel finds that the Complainant has established the third element 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 name <orientexpresstrainsapa.com> be transferred to the Complainant.

/David H. Bernstein/
David H. Bernstein
Sole Panelist
Date: August 18, 2025

determined that the Complainant holds a new International Registration for OE ORIENT EXPRESS, International Registration No.
1301176, which is currently valid and subsisting and also has been extended to Viet Nam. See WIPO Overview 3.0, section 4.8 (“a
panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the
case merits and reaching a decision”).