WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Htels Mridien v. Tara Rossi

Case No. D2005-0696

 

1. The Parties

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

The Respondent is Tara Rossi, Ohio, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lemeridienabudhabi.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2005. On July 1, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On July 1, 2005, Go Daddy Software 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. The Center verified that 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 July 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August1,2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2005.

The Center appointed Knud Wallberg as the sole panelist in this matter on August22,2005. 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 of America, where the Respondent is located, and more precisely in Chicago, Los Angeles, Miami, Minneapolis, New York and Palm Springs. Complainant also holds hotels in Abu Dhabi.

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 <lemeridienabudhabi.com> had been registered in favour of Tara Rossi, 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.

Therefore, on May 31, 2005, a cease and desist letter was sent to the Respondent on behalf of Socit des Htels Mridien and Mridien S.A., drawing his attention to the Complainant’s rights in the trademarks Le MERIDIEN and domain names comprised of or comprising the terms “Le Meridien”/”Meridien”, and 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.

No response was made to this letter, so 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, para. 4(a)(i), Rules, paras. 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 enclosed copy of the Complainant’s worldwide trademarks portfolio. All of these trademarks consist in or contain the word MERIDIEN.

The trademark Le MERIDIEN has been continuously and extensively used since at least 1972, for designating hotel services. 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.

The company Mridien S.A., licensee of Socit des Htels Mridien, owns the domain names <lemeridien-abudhabi.com> and <leroyalmeridien-abudhabi.com> since respectively February 29, 2000 and July 21, 2002. 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 <lemeridienabudhabi.com> totally reproduces the mark Le MERIDIEN in which Complainant has rights, the only differences consisting in the adjunction of the suffix “.com” and of the geographic term “Abudhabi”.

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

Second, the mere adjunction, within the disputed domain name, of the geographical designation ABUDHABI does not cast aside the likelihood of confusion between the prior trademark Le MERIDIEN and the disputed domain name. See Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 and Harrods Limited v. John Griffin, WIPO Case No. D2002-0641.

In the above mentioned WIPO Case No. D2004-0995, involving the Complainant, the panel had decided that the domain names <lemeridienkhaolak.com>, <lemeridenjakarta.com> and <lemeridienpacific.com> are confusingly similar to the trademark Le MERIDIEN in which the Complainant has rights. This solution should therefore also apply to the adjunction of such geographical designation (Abudhabi), as in the present case.

Furthermore, it should be noted that the combination of a trademark with a geographical name is a common practice for many domain names and does not exclude confusing similarity. It is indeed the case for the Complainant’s domain names which are mainly constituted of the combination of the trademark Le MERIDIEN with a geographical name which corresponds to the location of one of their hotels and also by the registration of the domain names lemeridien-abudhabi.com and leroyalmeridien-abudhabi.com.

In the present case, the Complainant holds two hotels located in Abu Dhabi called Le Meridien Abu Dhabi and Le Royal Meridien Abu Dhabi. The addition of this geographical designation to the trademark Le MERIDIEN within the disputed domain name does thus not avoid the confusion but, on the contrary, is likely to lead the consumer to believe that the disputed domain name is linked with the Complainant’s offering of services, or that the owner of this domain name is in partnership with the Complainant.

It results from the above that the disputed domain name <lemeridienabudhabi.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 disputed domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so.

Firstly, it should be noted that the disputed domain name <lemeridienabudhabi.com> does not point toward an active website and most probably it will never do. It points to a white web page with the sole mention “sorry”.

Given that the domain name <lemeridienabudhabi.com> is not linked to any website, this is obviously neither a legitimate use of a domain name nor a use in connection with a bona fide offering of goods and services.

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

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 mark or similar marks as domain names.

The Respondent does not 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, mark, and reputation by associating the domain name with a message of error.

The Respondent’s use of <lemeridienabudhabi.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 Mridien hotels will finally be mislead and informed of an error message. Indeed, when connecting to the domain name <lemeridienabudhabi.com>, it is a message of error which appears.

Also, the Respondent does create a false impression that <lemeridienabudhabi.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 geographical designation, such a pattern being also used by the Le Mridien hotels.

Finally, the mark Le MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent could not ignored 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 interest in the domain name <lemeridienabudhabi.com>.

Consequently, the Respondent lacks any legitimate interest in the domain name <lemeridienabudhabi.com> according to Rule 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 registered the domain name <lemeridienabudhabi.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.

The mere fact that the disputed domain name is registered in the same pattern as the ones belonging to the Complainant (trademark Le MERIDIEN + geographical designation) demonstrates that the Respondent has voluntarily tried to benefit unfairly from the reputation of the Complainant’s trademark by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.

It is very unlikely that the Respondent registered the disputed domain name <lemeridienabudhabi.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.

Since the mark Le MERIDIEN is famous all over the world in relation to hotel and restaurant services, the Respondent could not ignored that it was registering a domain name incorporating the rights of the Complainant in the trademark Le MERIDIEN so that the Respondent registered the domain name <lemeridienabudhabi.com> in bad faith.

Furthermore, 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 is also difficult to imagine that the Respondent could have lacked knowledge of the Complainant’s trademark when registering the contested domain name. Indeed, it is rather unlikely that the Respondent would have randomly registered the disputed domain name <lemeridienabudhabi.com> comprising a geographical indication where precisely the Complainant holds hotels, without being aware that it refers to the famous hotel chain Le Mridien.

Lastly, regarding the bad faith use of the disputed domain name, the sole web page linked to the <lemeridienabudhabi.com> domain name which features the mention “sorry” does not amount to an exploitation of the website.

In this regard, it should therefore be noted that “passive holding” does constitute bad faith.

It results from the above that the disputed domain name <lemeridienabudhabi.com> has been registered and used in bad faith according to Rule paragraph 3(b)(ix)(3).

B. Respondent

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

 

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 Complaint but without the benefit of a Response.

A: Identical or Confusingly Similar

The domain name <lemeridienabudhabi.com> contains Complainants distinctive and well known trade mark in its entirety. The component “abudabi” is a geographical designation and will be perceived as such when used in connection with the name of a hotel. “Abudabi” is thus in this context merely a descriptive term, and the addition of a descriptive terms to the well-known trademark Le MERIDIEN does not alter the fact that the domain name is confusingly similar to Complainants trademark.

The requirements of 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. The Respondent did not file a Response and did thus not demonstrate that he had any prior rights or legitimate interests in the domain name or give any other explanation as to the reason for registering the domain name.

Based on the case file and the fact that there are no other indications or facts in the case that could indicate that such legitimate interest may exist, 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 United States of America and given the fact that Complainant at the time of registration of the disputed domain name was established in Abu Dhabi and was the holder of the domain names <lemeridien-abudhabi.com> and

<leroyalmeridien-abudhabi.com>, 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 disputed domain name is currently not used to promote an active website. When entering the domain name in the URL the user is redirected to a “blank” webpage containing only the word “Sorry”. As it has been first established in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 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 disputed domain name is in itself liable to disrupt or otherwise harm the Complainant’s business.

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 <lemeridienabudhabi.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: August 26, 2005