WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Htels Mridien v. LaPorte Holdings, Inc.

Case No.D2004-0849

 

1. The Parties

The Complainant is Socit des Htels Mridien, Paris, France, represented by CabinetDegret, France.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, UnitedStatesofAmerica.

 

2. The Domain Name and Registrar

The disputed domain name <lemeriden.com> (the “Domain Name”) is registered with NameKing.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on October15,2004. On October18,2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the Domain Name at issue. On October18,2004, NameKing.com transmitted by email to the Center its verification response, which stated that LaPorte Holdings, Inc. is listed as the registrant and provided the contact details for the administrative, billing, and technical contact of the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October22,2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the“SupplementalRules”).

In accordance with the Rules, Paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October22,2004. In accordance with the Rules, Paragraph5(a), the due date for Response was November11,2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November17,2004.

The Center appointed Assen Alexiev as the Sole Panelist in this matter on December2,2004. 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, Paragraph7.

On December8,2004, the Panel issued its Procedural Order No.1, which in its material part requested the Complainant to specify on which trademarks and service marks the Complainant is based, and to provide documentary evidence in this regard. The Complainant had to file its answer no later than December11,2004. Further, the Panel gave the opportunity to the Respondent to comment on the answers given by the Complainant, no later than December14,2004.

On December9,2004, the Complainant responded to the request of the Panel. The Respondent did not submit any comments within the time limit given to it by the Panel.

In accordance with Rules, Paragraph11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, Paragraph15, the projected decision date was December16,2004.

 

4. Factual Background

The Complainant owns the following trademarks and service marks:

- US trademark LE MERIDIEN filed on January21,1987, under No.73/640.769 and registered on December31,2002, under No.2.667.456 covering various goods and services in Classes 16, 18, 21, 24, 25, 35, 39, 41 and 42, and notably “hotel, restaurant and bar services; hotel and restaurant management; booking of room services; hotel reservation services” in Class 42 (currently 43).

- Community trademark LE MERIDIEN filed on April1,1996, and registered on February10,2000, under No.000147959 covering various goods and services in Classes3,8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 38, 39, 41 and 42, and notably “hotels, restaurants, cafeterias, bars, night clubs, rental of rooms, hotel reservations” in Class 42 (currently 43).

- International trademark registration LE MERIDIEN registered on July26,2000, under No.741.561, designating various countries and particularly Cuba. Said International trademark covers various goods and services in Classes 16, 39 and 42, and notably “hotel services; motel services; hotel room bookings for travellers; provision of food and drink; cafeterias; cocktail lounge services and services provided by brasseries; catering services” in Class42 (currently43).

- Guyana trademark LE MERIDIEN registered with effect from October1,1986, under No.17528C, designating services of Class 42 (currently 43), and notably “hotel, room hire services”.

- French trademark LE MERIDIEN registered since February9,2000, under No.00/3.006.394, designating various goods and services in Classes 3, 8, 16, 18, 19, 21, 24, 25, 35, 37, 38, 39, 41 and 42, and notably “hotel services; motel services; reservation of hotel rooms for travellers; restaurant services; cafeterias; cocktail lounge services” in Class 42 (currently 43).

 

5. Parties’ Contentions

A. Complainant

The Complainant, Socit des Htels Mridien, runs a luxury hotel chain called LeMridien which is very famous in the field of the hotel industry. The Complainant is part of Le Mridien Group which is an internationally famous hotel group with a portfolio of 130 luxury and upscale hotels (34.000 rooms) in 56 countries worldwide.

The majority of its properties are located in the world’s top cities and resorts throughout Europe, the Americas, Asia Pacific, Africa, the Middle East and Central Asia. It should be noted that, some of these hotels are located in the region where the Respondent is located, i.e. in the Caribbean Islands (Le Mridien La Cocoteraie and Le Mridien SaintMartin) and in Guyana (Le Mridien Pegasus Guyana).

In 2003, the Complainant has invested 850 million in a programme designed to notably upgrade its facilities.

Moreover, Le Mridien also invests huge amounts of money in advertising campaigns. For example, in 2003, a 1 million global advertising campaign was launched with massive media coverage. Indeed, the ads were featured in high reach media titles such as Conde Nast Traveller, Fortune, Magazine, The Economist, The Sunday Time Travel Magazine, Newsweek, Vogue, Entertaining & Travel, etc.

Complainant owns a large portfolio of trademarks around the world, and notably is the holder of the LE MERIDIEN trademarks and service marks, listed in Section4 above. The trademark LE MERIDIEN has been continuously and extensively used since at least 1972 for designating hotel services. Due to a significant marketing and promotional effort the Complainant has developed considerable and valuable goodwill and reputation with respect to the LE MERIDIEN mark.

Furthermore, the Complainant has also invested a large amount of money in developing its presence over the Internet. The Complainant and its subsidiaries and affiliates are the owners of almost 300 domain names, many of them incorporating the words “meridien” or “lemeridien”. Almost all these domain names point to the official website “www.lemeridien.com” which offers the possibility for consumers to book a hotel room online and which provides all information regarding the hotels of the group.

Complainant’s website has been voted the “Best Hotel & Lodging Industry” site in 2003 by the Web Marketing Association and it has also won a Golden Click Gold Web Award at the Hospitality Sales & Marketing Association International Adrian Awards in NewYork in 2004.

The mark LE MERIDIEN is therefore widely used, all around the world and taken into account the above, it can be said that said mark LE MERIDIEN has then reached well-known and famous trademark status.

In this respect, a decision of the Court of Appeal of Paris and two UDRP decisions have indeed highlighted this status of the trademark LE MERIDIEN.

The Court of Appeal of Paris (March6,1992, 14th Chamber, Section C, Meridiana Air and Meridiana S.P.A. v. Socit des Htels Mridien) have indeed asserted concerning the Complainant’s trademark LE MERIDIEN that the protection of said trademark “isfurthermore extended since the trademark at hand is notorious”.

The Panel in Socit des Htels Mridien v. United States of Moronica, WIPO Case No.D2000-0405 stated that “it is also of the Panel’s opinion that the trademark LE MERIDIEN has acquired a distinctiveness which extends beyond its sole use as that as the indication of source of a chain of hotels”, and the Panel in Socit des Htels Mridien v. Modern Limited - Cayman Web Development, WIPO Case No.D2004-0321 stated that “Complainant’s mark is very well-known throughout the world”.

In July2004, the Complainant discovered that the domain name <lemeriden.com> had been registered in favour of Horoshiy, Inc., although such registration and use of the trademark LE MERIDIEN by Horoshiy, Inc. had not been authorised by Socit des Htels Mridien.

A note was incorporated within the disputed website mentioning that it is not the intent of Horoshiy, Inc. to hold domain names properly the property of someone else and that it is the company policy to transfer any domain name to any person/company which has a legitimate legal claim to that domain name. It was also mentioned that any query should be submitted by email.

Therefore, on August3,2004, an email was sent to the Respondent on behalf of Socit des Htels Mridien, drawing its attention to Socit des Htels Mridien’s rights on the trademarks LE MERIDIEN and domain names “Le Meridien”/“Meridien”, and requesting the transfer of the disputed domain name, according to the policy of Horoshiy, Inc. No response was made to this email.

Then, on August18,2004, a reminder email was sent to the Respondent.

No response was made to this last email.

On October8,2004, when the Complainant was about to lodge its Complaint, it appeared that the disputed domain name was now registered in the name of C/O Nameking, Inc.

It seems obvious that the current owner of the disputed domain name is indeed Horoshiy, Inc., since, on the one hand, it can not seriously be admitted that an entity called “C/O Nameking, Inc.” exists (in addition, Nameking has always been the Registrar for the disputed domain name) and, on the other hand, the website attached to the disputed domain name is still the same as when the domain name was owned by Horoshiy, Inc.

Moreover, these changes on the database concerning the identity of the registrant of the disputed domain name have obviously been made in order to hide the correct contact details of the Respondent further to the warning letters sent to it on behalf of the Complainant, as detailed above.

Consequently, the Complainant has considered for the purpose of this Complaint that the current owner of the disputed domain name is the same as it used to be a few days ago, i.e. Horoshiy, Inc.

Despite the strong presumption that the disputed domain name was still owned by the same entity, a warning letter, requesting the transfer of the disputed domain name in favour of the Complainant, was sent on October8,2004, by email to the “entity” C/O Nameking, Inc.

No response was made to said email.

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complaint is based on the trademarks and service marks, listed in Section 4 above, in which the Complainant has rights.

The disputed domain name <lemeriden.com> reproduces the mark LEMERIDIEN in which Complainant has rights, the only differences being the adjunction of the suffix “.com” and the deletion of the second letter “i”.

Firstly, the adjunction of the suffix “.com” is of no significance and does not render the disputed domain name <lemeriden.com> different from the Complainant’s trademark LE MERIDIEN.

This solution has been asserted by several UDRP decisions and notably in Accor v. Winston Minor, WIPO Case No.D2003-1002.

Besides, the mere deletion of the second letter “i”, constitutes a minor difference that the consumers will most probably not even notice.

This is exactly what has been decided in various WIPO decisions and notably in Louis Vuitton v. Net-Promotion, WIPO Case No.D2000-0430, regarding the domain name <luisvuitton.com> and in The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No.D2003-0103, regarding the domain name <nasdasq.com>.

Therefore, the consumer will not notice this minor difference contained in the disputed domain name.

On the contrary, the disputed domain name is a minor misspelling of the Complainant’s trademark LE MERIDIEN and an Internet user may type by mistake this domain name <lemeriden.com> instead of the Complainant’s domain name <lemeridien.com>, when trying to connect to the Complainant’s official website. Indeed, forgetting a letter when typing a name is a very common typing mistake.

Therefore, this minor difference is likely to lead the consumer to believe that the disputed domain name is linked with the Complainant offering of services, or that the owner of this domain name is in partnership with the Complainant.

It has been decided several times in prior UDRP decisions that a minor difference in spelling has no legal significance so that the disputed domain name has to be considered as confusingly similar to the Complainant’s trademark.

Further, according to prior decisions, it can be said that this is a typical case of “typo-squatting” where the infringing domain name is one letter less than or different from the Complainant’s mark.

Such attempts have been disapproved of in various UDRP decisions as for example in Playboy Enterprises International Inc. v. SAND Webnames-For Sale, WIPO Case No.D2001-0094 and in Red Bull GmbH v. Grey Design, WIPO Case No.D2001-1035.

It results from the above, that the disputed domain name <lemeriden.com> is confusingly similar to the trademark LE MERIDIEN in which the Complainant has rights.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name

Prior to notice to the Respondent of this dispute, Respondent was not using the domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so, and the Respondent does not make a legitimate non-commercial or fair use of the domain name.

A clear evidence of the above is that the Respondent’s domain name, which has been created on November4,2002, i.e. for two years, does not point to any active website.

Indeed, the domain name <lemeriden.com> only points to a general page that features “pop under” advertisements and links to websites which are in direct competition with the products and services offered by the Complainant under its LE MERIDIEN marks.

In a very similar case of the National Arbitration Forum - which moreover also involved the Respondent, Horoshiy, Inc. - it was considered that “Respondent’s use of domain names that are confusingly similar to Complainant’s CITYBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by the Complainant is not a use in connection with bona fide offering of goods or services pursuant to Policy4(c)(i) or a legitimate non commercial or fair use of the domain name pursuant to Policy4(c)(iii)”. (Citigroup Inc. v. Horoshiy,Inc, Naf Case No. 0406000290633 –.).

In another similar case (Disney Enters, Inc. v. Dot Stop, NAF Case No.FA145227), it was held that the Respondent’s diversionary use of the Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain name.

Lastly, in , Computer Doctor Franchise System Inc. v. The Computer Doctor, NAF Case No.95396 , it was decided that “The Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names. The Respondent is not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate non commercial purpose”.

Therefore, the Respondent is not using the domain name in connection with a bona fide offering of goods or services nor does it make a legitimate non-commercial or fair use of the domain name.

Instead, the Respondent is using the domain name to unfairly trade on Complainant’s name and mark, by associating the domain name with a list of words (some of them reproducing the Complainant’s trademark, some others being locations - Hong Kong, Cancun, Minneapolis - where the Complainant has hotels and others being generic words matching the Complainants’ activities, i.e. “Hotels”) and links resolving to online stores (for example: “www.orbitz.com”, “www.expedia.com”) offering the same type of services that the Complainant sells, i.e. booking of hotel rooms.

The Respondent’s use of <lemeriden.com> diverts Internet users who intend to access the Complainant’s offering of services when they type the domain name on their web browser. This is not a legitimate use.

Furthermore, this constitutes a real damage for the Complainant as the Internet users trying to book a room with one of the LE MERIDIEN hotels will finally be mislead and offered to book a hotel room of one the Complainant’s competitors. Indeed, the disputed domain name features links to the official website of Intercontinental hotels.

In this regard, it has already been held (The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No.D2000-0474 ) that “the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered “a bona fide offering of goods or services” within the meaning of Paragraph4(c)(i) of the Policy”.

Besides, the use of the disputed domain name does also tarnish the reputation of the Complainant’s mark, as Internet users trying to book a room with one of the LEMERIDIEN hotels may be mislead and offered to book a hotel room with lower standard hotels such as Ibis hotels which are two stars standard hotels.

Lastly, the Respondent’s website creates a false impression that <lemeriden.com> is in some way associated with, or sponsored by, the Complainant.

Indeed, the presentation of the disputed “wwwlemeriden.com” website is in some way similar to the Complainant’s website, as the Complainant’s trademarks are totally reproduced within the Respondent’s website alone (LE MERIDIEN), or in association with the generic word “Hotel” which is the activity of the Complainant, or in association with names of cities, as for example Minneapolis, Cancun, Brussels, where some of the Complainant’s hotels are located.

Thereby, the Respondent creates a false impression that <lemeriden.com> is in some way associated with, or sponsored by, the Complainant, or even worse that it is the official website of the Complainant.

This website is obviously merely a vehicle for generating revenue, so that it can be said that the Respondent’s activity is therefore clearly intended to obtain commercial gain and to divert Internet traffic away from Complainant’s site for its own commercial gain.

The Respondent (either as an individual, business or other organisation) has never been and is not currently commonly known by the domain name <lemeriden.com> or any portion thereof, nor has it registered the domain name as a trademark.

On the contrary, the Complainant is widely known by the consumers.

It should be noted here that the UDRP panels have already held several times that the failure of WHOIS information to imply that the respondent is commonly known by the disputed domain name is a factor in determining that Policy4(c)(ii) does not apply (Tercent Inc. v. Lee Yi - NAF Case No. 139720 / ADP of North America Inc. v. Horoshiy, Inc. - NAF Case No. 0407000304896 / Am West Airlines, Inc. v. Paik - NAF Case No. 206396).

Therefore, since the Respondent listed its name as LaPorte Holdings, Inc., or even Horoshiy, Inc. in the WHOIS domain name registration information, the Respondent is not commonly known by the domain name <lemeriden.com>.

The Complainant has never assigned, licensed, sold or transferred any rights in its LEMERIDIEN marks to the Respondent. The Complainant has not granted the Respondent permission or consent to use or register its marks or similar marks as a domain name.

Finally, the mark LE MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent could not have ignored that it was registering a domain name incorporating the rights of the Complainant in the trademark LEMERIDIEN, so that the Respondent has no legitimate interest in the domain name <lemeriden.com>.

In this regard, it has been asserted in a UDRP decision that the use of a mis-spelling of a famous name immediately raises suspicions and calls for an explanation” (CareerBuilder, LLC. v. Azra Kahn, WIPOCaseNo.D2003-0493 -).

Consequently, the Respondent lacks any rights or legitimate interests in the Domain Name.

3. The Domain Name was registered and is being used in bad faith

The Respondent has registered the disputed domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name.

It is clear that the Respondent’s registration and use of the disputed domain name are part of a flagrant pattern of conduct, since the Respondent is engaged in a pattern of registration of a series of well-known trademarks.

Indeed, and as far as the Complainant is aware, the Respondent has already been involved in seven cases, and in each of these cases the Respondent has been found to have registered and used the disputed domain names in bad faith. The concerned cases are the following:

- Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No.D2004-0611,

- Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No.D2004-0620,

- Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No.D2004-0625,

- InfoSpace, Inc. v. Horoshiy, Inc., NAF Claim Number FA 0406000282775,

- Avery Dennison Corporation v. Horoshiy, Inc., NAF Claim Number FA0406000289048,

- Citigroup Inc. v. Horoshiy, Inc., NAF Claim Number FA0406000290633,

- ADP of North America Inc. v. Horoshiy, Inc., NAF Claim Number FA0407000304896.

It has been held several times that this kind of behavior evidences bad faith registration and use pursuant to Policy4(b)(ii), as for example in Philip Morris Inc. v. r9.net, WIPO Case No.D2003-0004 and also in Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd, WIPO Case No.D2000-1384.

More recently, it has been decided that the fact that the Respondent has been involved in a large number of cases under the UDRP prove that the Respondent’s use and registration of the disputed domain name fall within the concept of bad faith (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No.D2004-0430).

It results from the above that the Respondent has been engaged in a pattern of cybersquatting conduct giving rise on bad faith registration and use, and that the Respondent registered the domain name <lemeriden.com> in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.

Moreover, 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 as to the source, sponsorship, affiliation or endorsement of its website.

As explained above, the Respondent’s domain name points to a website featuring links as well as numerous “pop under” advertisements, reproducing the Complainant’s trademark and redirecting Internet users to online stores offering similar services to those offered by the Complainant.

Indeed, the Respondent intentionally registered a domain name that contains the Complainant’s well-known mark for the Respondent’s commercial gain, since the Respondent’s domain name diverts Internet users who seek Complainant’s LEMERIDIEN mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to the Complainant’s trademark.

In the above mentioned Philip Morris Inc. v. r9.net, WIPO Case No.D2003-0004, which was quite a similar case, as the website attached to the disputed domain name merely displayed banners, the Panel held that this kind of facts is evidence of bad faith as the domain name is being used intentionally to attract users to this other website.

In the present case, the numerous “pop under” advertisements as well as the sponsored links or simple links displayed on the Respondent’s website evidence that said website is obviously merely a vehicle for generating revenue.

The Respondent registered the domain name <lemeriden.com> for the primary purpose of disrupting the Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that either directly competes with the Complainant’s website, since the Respondent’s website features a link to the official website of Intercontinental hotels, or undermines and tarnishes Complainant’s reputation, since some of the hotels accessible through the Respondent’s website are of lower standard.

Indeed, the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant’s LEMERIDIEN trademark.

Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy4(b)(iv).

Besides, should it be considered that the generic page linked to the disputed domain name does not amount to an exploitation of the website, it should therefore be noted that passive holding does constitute bad faith.

Indeed, it is now fairly well established, according to the prior UDRP decisions (notably Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003), that “inaction” can constitute bad faith registration and use.

Furthermore, the mere fact that the disputed domain name is a typo-squatting case (i.e.Respondent makes slight changes to the Complainant’s mark, in the apparent hope that those who seek to visit the website of the mark holder, the Complainant, might inadvertently make a typographical error and potentially could be taken to a website constructed by the Respondent to profit from this confusion) constitutes in itself bad faith registration and use, for example in General Electric Company v. Fischer Zvieli a/k/a Zvieli Fischerthat WIPO Case No.D2000-0377 .

Besides, the mark LE MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent could not have ignored that it was registering a domain name incorporating the rights of the Complainant in the trademark LEMERIDIEN so that the Respondent registered the domain name <lemeriden.com> in bad faith.

A clear evidence that the Respondent knew the trademark LE MERIDIEN is that, even if the disputed domain name is a misspelling of the Complainant’s trademark, said domain name points to a website featuring the Complainant’s trademark properly spelt – without typographical error.

Moreover, the registration without authorization of a domain name that is identical to a famous trademark is in itself evidence of bad faith.

This is what has been held by the Panel in the PepsiCo, Inc. v. Paul J. Swider, WIPO Case No.D2002-0561, when stating that “the Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous PEPSI mark and PEPSICO trade name is in and of itself evidence of bad faith”.

Moreover, the registration by the Respondent of the disputed domain name amounts to an act of “opportunistic bad faith”, since the Respondent has no connection with the world of hotel industry and since the Complainant’s trademark is well-known.

It has been held in previous UDRP cases, as for example Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No.D2000-0163, that the situation where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.

In another decision (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No.D2000-0226), it has been stated that “in the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark”.

Finally, in the Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Stanley Filoramo, WIPO case No.DWS2003-0004, the Panel found that “because Respondent and his business have no connection to the world of fashion and the business of the Complainants in particular, Respondent’s conduct in registering the domain name “zegnaermenegildo.ws” amounts to an act of opportunistic bad faith”.

These principles actually do apply to the present case.

Lastly, since the Complainant’s rights in the LE MERIDIEN mark were established for a very substantial period prior to the registration of the disputed domain name, basic searches would have revealed these rights. In addition to this, the brand is globally well renowned, as discussed above and even if the Respondent failed to conduct appropriate searches, it is highly unlikely that it would have been unaware of the Complainant’s pre-existing rights at the time of the registration of the disputed domain name.

It results from the above that the disputed domain name <lemeriden.com> has been registered and used in bad faith.

4. Relief sought

For all the foregoing reasons, Complainant requests that the registration of the Domain Name <lemeriden.com> be transferred to Complainant.

B. Respondent

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

 

6. Discussion and Findings

Paragraph4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, Paragraph2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, Paragraph5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, Paragraph(14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No.D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No.D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademarks and service marks LEMERIDIEN, listed in Section 4 above. All these marks contain the words LEMERIDIEN.

The differences between the Domain Name and the trademarks LE MERIDIEN are that the Domain Name lacks the letter “i” before the final letters “-en”, and that there is a suffix “.com” in the Domain Name.

The first difference has very little effect on the overall impression made by the Domain Name, because all other letters are identical, and the difference is in the final syllable of the Domain Name.

It is an established practice under the UDRP to disregard the suffix “.com” for the purposes of the comparison under Policy, Paragraph4(a)(i), so this difference is insignificant.

Therefore, the Panel finds that the Domain Name is confusingly similar to the marks LE MERIDIEN of the Complainant.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

Firstly, the Complainant contends that prior to notice to the Respondent of this dispute, Respondent was not using the domain name in connection with a bona fide offering of goods or services, and has not made preparations to do so. Secondly, the Respondent also does not make a legitimate non-commercial or fair use of the domain name. Thirdly, the Respondent (either as an individual, business or other organisation) has never been and is not currently commonly known by the domain name <lemeriden.com> or any portion thereof, nor has it registered the domain name as a trademark. Lastly, the Complainant has never assigned, licensed, sold or transferred any rights in its LEMERIDIEN marks to the Respondent, and the Complainant has not granted the Respondent permission or consent to use or register its marks or similar marks as a domain name.

Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, Paragraph4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.

The Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defence despite its burden under Rules, Paragraph5(b)(i) and5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules,Paragraph14). If Respondent had any justification for the registering or using the disputed domain name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph4(c) - or any other circumstance - is present in its favour.

In fact, the only information available about the Respondent is the content of the website, associated to the Domain Name, and the WHOIS information, submitted to the registrar.

Studying the contents of the website in different periods after the registration of the Domain Name, as evidenced by the Complainant and further verified by the Panel itself, by opening the website at “www.lemeriden.com”, the Panel finds that the website associated with the Domain Name contains mostly links to hotel reservation websites and to competitors of the Complainant, and, notably, uses several times the words “LEMERIDIEN”, and “Hotels”.

The website has no element showing that the Respondent has been commonly known by the Domain Name (Policy, Paragraph4(c)(ii)). The same applies to the WHOIS information supplied for the Respondent, be it LaPorte Holdings, Inc., C/O Nameking, Inc., or Horoshiy, Inc.

Further, the content of the website is not by itself evidence of any of the circumstances under Policy, Paragraph4(c)(i) and (iii). The Panel sees no justification to regard the use of the Domain Name as evidenced by the Complainant as a bona fide offering of goods or services. The Panel also finds no justification to consider this use of the Domain Name as a legitimate non-commercial use, as the content of the website is obviously of a commercial nature. As to the possibility that the use of the Domain Name be regarded as a “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 is convinced that the circumstances strongly suggest the opposite. Posting of links to commercial websites is commonly practiced for commercial gain in the Internet, and the Respondent uses a Domain Name that is confusingly similar to Complainant’s LE MERIDIEN marks for a website containing the name LEMERIDIEN and featuring links to competitors of the Complainant, thus probably misleadingly diverting consumers.

The silence of the Respondent after the Complainant’s counsel sent to the Respondent two demand letters in August 2004, is also relevant to the question of rights or legitimate interests in the Domain Name. The lack of an answer to these letters, and the subsequent two changes of the WHOIS information about the registrant of the Domain Name without making any change in the content and the nature of the website, associated to the Domain Name, speak for themselves.

Therefore, as the circumstances support the prima facie case established by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the question of the identity of the Respondent is important for the purpose of determining whether the Domain Name was registered and used in bad faith, and will deal with it in the first place.

According to the Complainant, the initial registrant of the Domain Name was Horoshiy, Inc. On August3,2004, the Complainant sent to Horoshiy, Inc. a letter demanding the transfer the Domain Name to the Complainant. The demand letter contained information about the Complainant’s trademark rights and commercial activities. There was no response to the demand letter, as well as to the reminder letter of August of August18, 2004. Following these events, the Registrar’s WHOIS information with regard to the name of the registrant of the Domain Name was changed to “C/O Nameking, Inc. The two changes of the contact details lead to no material change to the content of the website, associated to the Domain Name. After the Complainant discovered the change in the contact information, on October8,2004, it sent a demand letter to “C/O Nameking, Inc.” As seen from the evidence in the case, following the reception of this letter, the name of the registrant of the Domain Name was changed again – this time to “LaPorte Holdings, Inc.” There is no explanation by the Respondent of these circumstances.

The analysis of the facts leads to the conclusion that the change of ownership information may well have been made in an effort to conceal the real identity of the registrant and to evade the Policy, and that in reality the holder of the Domain Name is the same - LaPorte Holdings, Inc., C/O Nameking, Inc., and Horoshiy, Inc. are three faces of the same person.

The Complainant contends that the Respondent registered the Domain Name <lemeriden.com> with knowledge of Complainant’s LE MERIDIEN marks. The wide popularity of Complainant’s LE MERIDIEN marks is established by the evidence in the case. The Respondent’s website contains a list of words (some of them reproducing the Complainant’s trademark LE MERIDIEN, some others being locations - Hong Kong, Cancun, Minneapolis - where the Complainant has hotels and others being generic words matching the Complainants’ activities, i.e. “Hotels”) and links resolving to online stores offering the same type of services that the Complainant sells, i.e. booking of hotel rooms. These circumstances make a strong suggestion that the Respondent actually knew about the Complainant and its activities, when the Domain Name was registered and used. Therefore, it is likely that the actions of the Respondent represent an attempt to make an unfair monetary gain in detriment of the Complainant, by creating a false impression that the Domain Name is in some way associated with, or sponsored by the Complainant, or that it is an official website of the latter. Such a conduct is defined by Policy, paragraph4(b)(iv) as an instance of bad faith registration and use.

The Complainant also alleges that the Respondent’s registration and use of the disputed domain name are part of a flagrant pattern of conduct, since the Respondent is engaged in a pattern of registration of a series of well-known trademarks, and has already been involved in seven UDRP cases, where he was consistently found to have registered and used the disputed domain names in bad faith. There is no rebuttal of this allegation by the Respondent, so the Panel accepts it to be true. This aspect of the Respondent’s activities is highly relevant to the question of bad faith, as explicitly stated by Policy, Rule4(b)(ii).

Therefore, considering the evidence produced in this case, and in the absence of any explanation from the Respondent in rebuttal of the allegations of the Complainant, the Panel concludes that the registration and use of the Domain Name by the Respondent was done in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs4(i) of the Policy and 15of the Rules, the Panel orders that the Domain Name <lemeriden.com> be transferred to the Complainant.


Assen Alexiev
Sole Panelist

Dated: December16,2004