WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Htels Mridien v. Richard English

Case No. D2005-0646

 

1. The Parties

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

The Respondent is Richard English, Winter Park, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lemeridientowers.com> is registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June21,2005. On June22,2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On June23,2005, Melbourne IT trading as Internet Name Worldwide 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 and technical contact.

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 June30,2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July20,2005. The Response was filed with the Center on July8,2005. Complainant filed a supplementary response on July22,2005.

The Center appointed Knud Wallberg as the sole panelist in this matter on August15,2005. 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, Socit des Htels Mridien, runs a luxury hotel chain called Le Mridien. Socit des Htels Mridien is part of the Le Mridien Group which is an international 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. Six hotels are located in the United States, where the Respondent is located, and more precisely in Chicago, Los Angeles, Miami, Minneapolis, New York and Palm Springs.

Socit des Htels Mridien or its subsidiary company, Mridien S.A., are the owners of many trademarks and domain names, comprised of or comprising the terms “Le Meridien” or “Meridien”, registered worldwide.

 

5. Parties’ Contentions

A. Complainant

By the end of April 2005, the Complainant discovered that the domain name <lemeridientowers.com> had been registered in favour of Richard English, although such registration and use of the trademark LE MERIDIEN by the Respondent had not been authorised by Socit des Htels Mridien or any of its subsidiaries, companies, affiliates or representatives.

In May 2005, a cease and desist letter was sent requesting the transfer of the disputed domain name. It was also stated in the letter that the Complainant would be prepared to reimburse to the Respondent the costs directly associated with acquiring the domain name at issue.

Respondent replied stating that in his opinion the adjunction of the term ‘towers’ was sufficient enough to avoid any confusion between his domain name and the trademark LE MERIDIEN but still proposing to agree with the Complainant’s request provided that a “fair” compensation be allowed.

Complainant’s trademark attorney replied and asked the Respondent for what amount he would be prepared to transfer his domain name, since the reimbursement of the cost associated with the registration of said domain name did not appear to be enough for him.

Respondent replied that he would agree to transfer his domain name <lemeridientowers.com> for the amount of US$10,000.

Given the above, the Complainant had no other choice than to lodge the present Complaint.

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

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant is the owner of numerous trademarks for LE MERIDIEN registered all over the world, in over 80 countries including in the United States of America, designating hotel and restaurant services, as per the attached copy of the Complainant’s worldwide trademarks portfolio. All of these trademarks consist of or contain the word MERIDIEN.

The trademark LE MERIDIEN has been continuously and extensively used since at least 1972, for designating hotel services. Copies of the relevant press-releases in this regard, as well as copies of the Complainant’s catalogues from the past five years are provided.

Moreover, 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. Socit des Htels Mridien and its subsidiaries and affiliates are thus owners of almost 300 domain names. 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.

The amount of business done by the Complainant through its website is increasing constantly.

The mark LE MERIDIEN has reached well-known and famous trademark status, which has been recognized in several court decisions as well as decisions under the UDRP.

The disputed domain name <lemeridientowers.com> totally reproduces the mark LE MERIDIEN in which Complainant has rights as well as its ‘le meridien’ domain names.

The only differences consist in the adjunction of the suffix “.com” and of the term ‘towers’ at the end of the disputed domain name.

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

Besides, the mere adjunction within the contested domain name of the term ‘towers’ is not of a nature to sufficiently differentiate said domain name from the Complainant’s trademark. On the contrary, such an adjunction is of a nature to strengthen the likelihood of confusion with the Complainant’s trademark as the term ‘towers’ is quite often used in association with hotel names, for example the hotel Sheraton Towers in Singapore, the hotel Sheraton Cairo Hotel Towers & Casino, the Sheraton Heliopolis Hotel Towers and Casino, and the hotel Intercontinental Tower in Bangkok.

It has been decided in numerous UDRP cases that the mere adjunction of generic terms is not sufficient to avoid confusion between the domain name at issue and the Complainant’s trademark.

Lastly, it should be noted that the term ‘towers’ is part of the name of two hotels belonging to the Le Mridien Group, i.e. Le Mridien Tower Kuwait as shown by the attached printout of the Complainant’s official website and Le Mridien Towers Makkah which is due to open in 2006, and which has already been announced.

It results from the above that the disputed domain name <lemeridientowers.com> is confusingly similar to the trademark LE MERIDIEN in which the Complainant has rights, according to Rules, paragraph 3(b)(ix)(1).

B. The Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

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 he made preparations to do so.

Further 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 was created on March16,2005, does not point to any active website. Indeed, the domain name <lemeridientowers.com> merely points towards a web page in construction.

In this regard, it should be noted that even if the Respondent alleged to have made preparations to use this domain name in his business, he has never tried to show his legitimate interest in using the domain name <lemeridientowers.com>, even when he replied to the warning letter sent by the Complainant’s attorney.

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

Instead, the Respondent is using this domain name to unfairly trade on Complainant’s name and mark and reputation.

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

Furthermore, this constitutes a real damage for the Complainant and tarnishes the reputation of the Complainant’s mark as the Internet users trying to book a room with one of the LE MERIDIEN hotels will finally be misled and might well think that the Complainant does not provide online services, which is a great commercial failing nowadays. This is not true and also very unfair since the Complainant has made a lot of effort to provide a good online service. The Complainant has indeed been granted lots of awards with regard to the efficiency of its website and its offering of online services.

Lastly, the Respondent creates a false impression that <lemeridientowers.com> is in some way associated with, or sponsored by, the Complainant, or even worse that it is the official website of the Complainant, as the Complainant’s trademark is totally reproduced within the disputed domain name with the adjunction of a generic word quite common in the hotel industry and/or of a word also used by some Le Mridien hotels.

It is very likely that this website is or was planned to become merely a vehicle for generating revenue, so that it can be said that the Respondent’s activity is clearly intended to obtain commercial gain and to divert Internet traffic away from Complainant’s website for its own commercial gain.

Further, the Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the domain name <lemeridientowers.com> or any portion thereof, nor has he registered the domain name as a trademark. The Respondent listed his name as being Richard English in the WHOIS domain name registration information, the Respondent is not commonly known by the domain name <lemeridientowers.com>.

The Complainant has never assigned, licensed, sold or transferred any rights in its LE MERIDIEN 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 been unaware that it was registering a domain name incorporating the rights of the Complainant in the trademark LE MERIDIEN, so that the Respondent has no legitimate interests in the domain name <lemeridientowers.com>.

Consequently, the Respondent lacks any legitimate interests in the domain name <lemeridientowers.com> according to Rules, paragraph 3(b)(ix)(2).

C. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

Respondent has offered to transfer the domain name to the Complainant for the amount of US$10,000. despite the fact that he alleged having legitimate rights in said domain name. It is now fairly established that the offer to sell the domain name for a price exceeding the direct costs of its registration is an evidence of bad faith registration and bad faith use. And even considering that investments have been made by the Respondent with regard to marketing efforts (despite the fact that no proof has ever been provided), it can not reasonably reach the amount of US$10,000.

Moreover, regarding the allegation of the Respondent that he has already made investment is quite hard to believe since even his website has never featured any offer and is still under construction.

It results from the above that the fact that the Respondent offered to transfer the disputed domain name for the amount of US$10,000. does evidence bad faith on the part of the Respondent.

Furthermore, the Respondent is not known under this name and his own name has no connection with either LE MERIDIEN nor with the hotel industry, as far as the Complainant knows, so that there is nothing which justifies his registration of the domain name <lemeridientowers.com> except for trading upon the goodwill of the Complainant for his own commercial gain.

Moreover, the Respondent registered the domain name <lemeridientowers.com> for the primary purpose of disrupting the Complainant’s business, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.

Complainant already holds one hotel called Le Mridien Tower in Kuwait which is very frequently quoted on the Internet as Le Meridien Towers (as shown by the printout of the search conducted on the websites of Google.com and Google.fr [Annex 20]) and a hotel called Le Mridien Towers Makkah was announced to be opening in 2006. This opening has not been kept secret at all as it is advertised on the Complainant’s website. Therefore, it is very unlikely that the Respondent registered the disputed domain name <lemeridientowers.com> randomly. On the contrary, it is very more likely that he did so in order to unfairly and opportunistically benefit from the goodwill associated with the Complainant’s LE MERIDIEN trademark.

Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).

Besides, the registration of a well-known trademark of which the Respondent must reasonably have been aware is in itself sufficient to amount to bad faith. The mark LE MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent could not have been unaware that he was registering a domain name incorporating the rights of the Complainant in the trademark LE MERIDIEN so that the Respondent registered the domain name <lemeridientowers.com> in bad faith.

It is then very likely that the disputed domain name <lemeridientowers.com> was chosen by the Respondent because of its confusing similarity to the trademark LE MERIDIEN in order to attract, for commercial gain, Internet users to its website.

Moreover, the registration without authorization of a domain name that is identical to a famous trademark is in itself evidence of bad faith. Also, 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 hotel industry and since the Complainant’s trademark is well-known.

In addition, 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 he would have been unaware of the Complainant’s pre-existing rights at the time of the registration of the disputed domain name.

Lastly, regarding the bad faith use of the disputed domain name, the sole page linked to the disputed domain name <lemeridientowers.com> which indicates that the website is under construction does not amount to an exploitation of the website. In this regard, it should therefore be noted that “passive holding” does constitute bad faith.

B. Respondent

The following is taken from the Response:

Complainant erroneously and without any substantiation whatsoever claims that Respondent is using the disputed domain name to unfairly trade on Complainant’s tradename, mark and reputation; that Respondent’s use of the domain name diverts users from Complainant to Respondent; that Complainant has suffered damages and a tarnished image; and that the domain name’s website was likely planned merely as a vehicle to generate revenues.

Complainant offers not a single piece of evidence to support any of these unsubstantiated claims, and Respondent asks that they be given no weight in the consideration of this matter. On the contrary, Respondent categorically denies each of the above-referenced assertions by Complainant, and states that neither Respondent nor any affiliated person or entity has ever engaged in the creation of a website, or any other activity designed to divert Complainant’s customers or deprive Complainant of revenues.

In Complainant’s own Complaint, it states that Respondent was “not using the domain name” nor had we “made preparations to do so”. Again Complainant makes outlandish and completely unsubstantiated assertions with respect to Respondent’s actions and intentions. Complainant offers no evidence that the domain name was created primarily for the purpose of selling the domain name registration, except to subsequently refer to a requested compensation which was sent to Complainant by Respondent only after Complainant asked Respondent how much compensation he would like to have in order to resolve all disputes in the matter. Complainant conveniently ignores the fact that in the initial communications between the Complainant and Respondent, Respondent did not request any monies, but only entered into such discussions after Complainant raised the issue as a possibility.

Similarly, while Respondent acknowledges suggesting US$10,000. as a settlement, Complainant does not refer whatsoever to our subsequent communications, in which Respondent requested the relatively small sum of US$1,395. to settle the issue, which amount relates to actual costs incurred by Respondent’s use of the domain name in the creation of artwork drafted/designed (as yet unused) and planned marketing materials.

Respondent denies that it has ever operated in bad faith. To the contrary, Respondent has, in all communications, stated to Complainant the completely innocent nature of its registration, done without malice or intended harm, and has at all times affirmed its willingness to transfer the domain name to Complainant and abide by Complainant’s stated limitations and restrictions on any further use of that name. Respondent again states its willingness to transfer the domain name to Complainant, and asks only that the Panel, as part of its final resolution of the dispute, instruct Complainant to reimburse Respondent the sum of US$1,395. as stated above.

(The Panel notes that the Complainant has rebutted some of the Respondent’s statements in their supplementary submission, but these will not be accounted for).

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the parties submissions.

A. Identical or Confusingly Similar

The domain name <lemeridientowers.com> contains Complainant’s distinctive and well known trademark in its entirety. The component “towers” seems to be a quite common designation within the hotel business as a description of a certain “type” or “style” of hotel. ‘Towers’ is thus, in this context, merely a descriptive term, and the addition of a descriptive term to the well-known trademark LE MERIDIEN does not alter the fact that the domain name is confusingly similar to Complainant’s trademark.

The requirements in the Policy, paragraph 4(a)(i) are therefore fulfilled

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, in the Response the Respondent did not demonstrate that he had any prior rights or legitimate interests in the domain name, nor did he give any other explanation as to the reason for registering the domain name.

The requirements of the Policy, paragraph 4(a)(ii) and paragraph 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Given the notoriety of Complainant’s trademark including in the country of residence of the Respondent, the United States, and given the fact that Complainant at the time of registration of the contested domain name already had established and had announced establishment of further Le Meridien “tower” hotels, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of Complainant and Complainant’s marks and activities.

The contested domain name is currently not used to promote an active website. When entering the domain name in the URL a standard holding page (“under construction”) from what appears to be the Respondent’s ISP emerges. As it has been first established in WIPO Case No. D2000-0003, Telstra Corporation Limited. v. Nuclear Marshmallows and confirmed in numerous later cases, the concept of “use” in the Policy is not limited to active, i.e. directly infringing use. In the Panel’s view, the present use of the contested domain name is in itself liable to disrupt or otherwise harm the Complainant’s business. The Panel therefore need not address whether the other issues discussed by the parties is also a proof of bad faith or not.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii) are also fulfilled in this case.

 

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 <lemeridientowers.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: August29,2005