WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Htels Mridien v. Hank

Case No. D2005-0330

 

1. The Parties

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

The Respondent is Hank, Gwangju, Seo-Gu, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <lemeridiens.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on March 31, 2005. On March 31, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 1, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 15, 2005. 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 “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 April 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May11,2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Mladen Vukmir as the sole panelist in this matter on June13,2005. 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 company duly incorporated and operating under the laws of France and engaged in businesses related to hotels and resorts.

The Complainant is the registered owner of numerous LE MERIDIEN trademarks dating from the mid 1980s to present days, including:

- International trademark LE MERIDIEN registered on July 26, 2000, under No. 741.561, and designating various countries in classes 16, 39, and 42 (currently 43);

- Community trademark LE MERIDIEN filed on April 1, 1996, and registered on February 10, 2000 under No. 000147959 covering various goods and services in classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 38, 39, 41, and 42 (currently 43),

- United States trademark LE MERIDIEN filed on January 21, 1987, under No. 73/640,769 and registered on December 31, 2002, under No. 2,667,456 covering various goods and services in classes 16, 18, 21, 24, 25, 35, 39, 41, and 42 (currently 43);

- French trademark LE MERIDIEN registered since February 9, 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 (currently 43).etc.

The Complainant has registered numerous domain names featuring its trademark.

The Domain Name was registered by the Respondent with the Registrar on December29, 2004. The website associated with the Domain Name contains numerous references to the Complainant’s trademark LE MERIDIEN and offers competing services to the customers.

 

5. Parties’ Contentions

A. Complainant

The Complainant, as part of Le Mridien Group, runs a luxury hotel chain called Le Mridien, including 130 luxury and upscale hotels well-known around the globe.

The Complainant is the owner of numerous LE MERIDIEN trademarks registered in 80 countries, designating hotel and restaurant services. The trademark LE MERIDIEN has been continuously and extensively used since at least 1972. The Complainant has developed considerable and valuable goodwill and reputation with respect to the LE MERIDIEN trademark. Accordingly, the Complainant claims that its trademark LE MERIDIEN is widely used worldwide, hence, it has reached the status of a well-known and famous trademark.

The Complainant has also invested in developing its presence on the Internet and owns almost 300 domain names based on its trademark. Almost all of these domain names point to the official website “www.lemeridien.com”, which offers consumers a possibility to book a hotel room online and provides all information regarding the hotels of the group.

In January 2005, the Complainant discovered that the Domain Name had been registered in favour of the Respondent, although such registration and use of the trademark LE MERIDIEN by the Respondent had not been authorised by the Complainant.

The Complainant holds that the Domain Name is confusingly similar to the trademark LE MERIDIEN in which the Complainant has rights, due to the fact that the Domain Name is a minor misspelling of the Complainant’s trademark LE MERIDIEN. The Complainant holds that Internet users may type the Domain Name by mistake, instead of the Complainant’s domain name <lemeridien.com>, when trying to connect to the Complainant’s official website. The Complainant concludes that this minor difference is likely to lead consumers to believe that the Domain Name is linked to the Complainant’s offering of services, or that the owner of the Domain Name is in any way affiliated with the Complainant.

The Complainant maintains that 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, but rather unfairly trades on Complainant’s name and trademark, by associating the domain name with a list of generic words and links resolving to online stores offering competing services. The Complainant further claims the Respondent (either as an individual, business or other organisation) has never been and is not currently commonly known by the Domain Name or any portion thereof, nor has it registered the Domain Name as a trademark, while the Complainant is, on the contrary, widely known by consumers.

In addition, the Complainant avers that the Respondent’s bad faith registration and use of the Domain Name constitute a real damage for the Complainant and tarnish the reputation of the Complainant’s trademark as the Internet users trying to book a room with one of the LE MERIDIEN hotels will be misled and offered to book a hotel room either at one of the Complainant’s competitors, or in a hotel which might not be of the same standard of quality.

The Complainant asserts that the Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy, paragraph 4(b)(iv). Namely, by registering and using the 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 trademark as to the source, sponsorship, affiliation or endorsement of its website. Therefore, the Complainant infers that the Respondent has registered the Domain Name for the primary purpose of disrupting the Complainant’s business by redirecting Internet traffic intended for the Complainant to the Respondent’s website, which either directly competes with the Complainant’s website, or undermines and tarnishes the Complainant’s reputation.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant submits evidence on registration of numerous trademarks consisting of the styled words “LE MERIDIEN”, in different classes and countries, since the mid 1980s.

The Panel admits the proof of renown of the Complainant’s trademark LE MERIDIEN.

The Panel is of the opinion that the Domain Name is practically identical to the Complainant’s trademark. The Domain Name incorporates the whole verbal component of the Complainant’s trademark. Numerous UDRP decisions, such as UDRP cases Caisse Nationale des Caisses d`Epargne et de Prevoyance v. LaPorte Holdings, WIPO Case No. D2005-0430; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272, have clearly established that adding or subtracting a letter from a word trademark does not elevate such domain names to a level of distinct terms. Consequently, adding the suffix “s” to the word “meridien” does not represent distinctiveness between the Complainant’s trademark and the Domain Name for an Internet user.

Further, the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (the “Overview”) finds that ownership of a registered trademark to which a disputed domain name is confusingly similar satisfies the requirement of having trademark rights under paragraph 4(a)(i) of the Policy.

Thus, the Panel finds that the Complainant has satisfied the prerequisite of paragraph 4(a)(i) of the Policy having proved that the Domain Name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent uses the Domain Name to unfairly trade on the Complainant’s name, trademark and goodwill, by associating the Domain Name with a list of such generic words matching the Complainant’s activities as “hotels”, “hotel reservations”, “travel” and links resolving to online stores offering the same type of services that the Complainant offers, i.e. booking of hotel rooms.

Having examined the evidence offered by the Complainant, namely the printout of the Respondent’s web pages (Annex 16 of the Complaint), and in the absence of any evidence to the contrary, the Panel deems that the Respondent’s likely true motivation was indeed diverting the Complainant’s customers to the Respondent’s website for the purpose of gaining profit by exploiting typical Internet economies, such as number of “hits” or “eyeballs”, while the Respondent neither had any evident connection to the hotel industry, nor attained any professional reputation in the field by preceding fair use of the Domain Name. The extensive abuse of the Complainant’s trademark LE MERIDIEN on the Respondent’s website (without the “typographical error” which appears in the Domain Name, as emphasized by the Complainant), as well as use of the generic words corresponding to the Complainant’s business activity, indicate mala fide offering of the competing services by the Respondent, which excludes the possibility of any legitimate non-commercial or fair use of the Domain Name.

In the absence of any assertions by Respondent, the Panel has discovered no circumstances demonstrating the Respondent’s rights or legitimate interests in the Domain Name in the sense of paragraph 4(c). Moreover, according to the Overview, it has been accepted by panels that, due to the recognized difficulty “of proving a negative”, once a complainant presents legally sufficient facts showing that a respondent lacks rights or legitimate interests, such “respondent carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. The Overview refers to UDRP cases Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, as relevant decisions substantiating this standpoint adopted by panels.

Therefore, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy having proved the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that there are multiple grounds of bad faith on the part of the Respondent established in the present case. The Panel’s findings from the previous section of this decision signify the applicability of paragraph 4(b)(iv) of the Policy. Namely, the Respondent’s use of the Domain Name clearly shows its attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark and official website as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the services offered on the site.

Further circumstances pointed out by the Complainant as to the Respondent’s bad faith registration of the Domain Name, such as trademark infringement, typo-squatting, “opportunistic bad faith” and providing false contact details to the Registrar, additionally reinforce this Panel’s judgment that the Domain Name was registered and used in bad faith.

All of these grounds were addressed by various UDRP decisions, specifically in UDRP cases Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, and Este Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, addressing the issues of trademark infringement and typo-squatting; Boiron S.A. v. Jos Antonio Paya Serer, WIPO Case No. D2001-0118, finding “opportunistic bad faith” on the part of the respondent who knew or must have known of the renown of the complainant’s trademark, and quoting further UDRP case law; as well as UDRP cases Lincoln Property Company v. LPC, WIPO Case No. D2001-0238; and Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520 reflecting on providing false and misleading information in connection with registration of a domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy having proved that the Respondent acted in bad faith when registering and using the Domain Name.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lemeridiens.com> be transferred to the Complainant.


Mladen Vukmir
Sole Panelist

Dated: June 27, 2005