World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hotels Meridien v. WhoIs Guard / Jim Thiam

Case No. D2011-1030

1. The Parties

The Complainant is Société des Hotels Meridien, under the laws of France, an affiliate of Starwood Hotels and Resorts Worldwide, Inc., of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is WhoIs Guard, of California, United States of America / Jim Thiam,of Sarawak, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <lemeridien-kl.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 20, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2011 providing the registrant and contact information disclosed by eNom, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on the same day.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.

On July 18, 2011, the Center sent an additional communication to the parties. The Respondent was provided with an additional three (3) days in order to indicate to the Center whether it intended to participate in these proceedings. The Respondent did not submit any Response.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 4, 2011. 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 asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant in this matter is Société des Hotels Meridien (“Complainant”), a corporation organized and existing under the laws of France and an affiliate of Starwood Hotels and Resorts Worldwide, Inc. The Complainant is the owner of all right, title and interest in and to the LE MERIDIEN trademarks for hotel and resort services, travel services, and various related goods and services. The Complainant currently owns a portfolio of more than 100 luxury and upscale Le Meridien hotels in over 50 countries worldwide, the majority of which are located in the world’s major cities and resort communities. The Complainant invests heavily in marketing and has achieved great success with its Le Meridien brand. As a result of its efforts, Complainant’s Le Meridien hotels have received numerous awards, including recently being named one of the top fifteen hotel and resort brands in the world in the Luxury Brand Status Index survey conducted by the New York-based Luxury Institute.

The Complainant also owns trademark registrations for the LE MERIDIEN throughout the world in connection with its hotel and resort services, travel services, and various related goods and services. For example, the Complainant has been granted the following CTM trademark registrations: LE MERIDIEN, reg. No. 5821012, filing date April 10, 2007, class 36 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 6980031, filing date June 11, 2008, classes 44 and 45 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 147959, filing date April 1, 1996, classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 39, 41 and 42 of the International Classification of Goods and Services.

The Complainant also owns many domain names including the LE MERIDIEN mark, many of which direct consumers to its company website. These include, for example, <lemeridien-hotels.com>, <lemeridienhotels.com>, <lemeridien.travel>, <lemeridien.eu>, <lemeridien.de>, <lemeridien.nl>, <lemeridien.cn>, <lemeidien.com>, <lemeridan.com>, <lemeridiens.com> and <wwwlemeridien.com>.

The Complainant has two Le Meridien branded properties in Malaysia, including one in Kuala Lumpur, the Le Meridien Kuala Lumpur. The website for this property is located at “http://www.lemeridienkualalumpur.com/” or “http://www.starwoodhotels.com/lemeridien/property/overview/index.html?propertyID=1840”.

The disputed domain name <lemeridien-kl.com> was registered on May 27, 2011.

In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding, to issue a decision that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the disputed domain name consists of nothing more than the Complainant’s LE MERIDIEN trademark, the “kl” abbreviation for Kuala Lumpur, Malaysia, and the “.com” generic top level domain (“gTLD”) extension. The Complainant contends that the gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity (Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723).

The Complainant argues that “kl” is a common abbreviation of Kuala Lumpur and is frequently used by residents of the city, Malaysia and others around the world to refer to Kuala Lumpur, Malaysia. Furthermore, the Complainant contends, the addition of a geographical indicator to Complainant’s LE MERIDIEN trademark “add[s] to rather than diminish[es] the likelihood of confusion” because “[t]he addition of a place name to a trademark … is a common method for indicating the location of a business enterprise identified by the trademark or service mark … even more so in the case of hotels.” (Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244).

Thus, the Complainant concludes, the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights.

Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s trademark in domain names or in any other manner.

The Complainant argues that the Respondent is using the disputed domain name and/or its associated email servers, to facilitate a scam that involves the posting of fake job listings at various websites for nonexistent job openings at the Complainant’s properties around the world. To effect the scam, the Respondent posts fraudulent listings at job-search websites. Individuals applying for the nonexistent jobs posted by the Respondent are then directed to respond to an email address, “careers@lemeridien-kl.com”. Each applicant is then "hired" or scheduled for a job interview, after which the applicant is often directed to apply for a work visa via one of several nonexistent visa services or immigration attorneys. This visa requires the applicant to disclose all of their personal contact information and pay a substantial sum for the processing of their visa application. The Complainant contends that the email address “career@lemeridien-kl.com” was used by someone claiming to be “Mr. C. Lo, HR Manager” of the Le Meridien Kuala Lumpur. The Complainant contends that there is no one by the name “C. Lo” employed at the Le Meridien Kuala Lumpur and that they have not authorized any third-party to register or use the LE MERIDIEN mark in connection with the <lemeridien-kl.com> disputed domain name or as part of an email address or email servers. When users attempt to visit the Respondent’s website at the disputed domain name, consumers are redirected to the Complainant’s web site “www.lemeridienkualalumpur.com” and will reasonably but mistakenly believe that this redirection to the Complainant’s website means that the disputed domain name is somehow related to or approved by the Complainant, when that is not the case.

The Respondent appears to have used the corresponding website for “phishing”. This is a form of the Internet fraud that aims at stealing valuable information from visitors to the website and has become a serious problem for the financial industry worldwide (Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa, WIPO Case No. D2006-0614). Such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy.

And finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith as the Complainant’s LE MERIDIEN marks are among the most famous trademarks in the travel and leisure industry and enjoy widespread international recognition. It is therefore inconceivable that the Respondent was unaware of LE MERIDIEN trademarks when it registered the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487). The mere fact that the Respondent registered the confusingly similar disputed domain name without authorization is evidence of its bad faith registration (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The fact that the Respondent has used the disputed domain name and its associated email servers to impersonate employees of the Complainant’s Le Meridien Kuala Lumpur hotel is further evidence that the Respondent knew of the Complainant’s rights in LE MERIDIEN marks and suggests Respondent’s opportunistic bad faith in registering the disputed domain name. The Respondent’s exploitation of Complainant’s goodwill for financial gain by perpetrating a fraud on unsuspecting job applicants demonstrates Respondent’s bad faith.

Based on the foregoing, the Complainant concludes that (i) the disputed domain name is identical and/or confusingly similar to the Complainant’s LE MERIDIEN trademarks, (ii) the Respondent has no right or legitimate interest in this disputed domain name, and (iii) the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the LE MERIDIEN marks throughout the world in connection with its hotel and resort services, travel services, and various related goods and services. For example, the Complainant has been granted the following CTM trademark registrations: LE MERIDIEN, reg. No. 5821012, filing date April 10, 2007, class 36 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 6980031, filing date June 11, 2008, classes 44 and 45 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 147959, filing date April 1, 1996, classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 39, 41 and 42 of the International Classification of Goods and Services.

The Panel finds that the disputed domain name <lemeridien-kl.com> exactly reproduces the Complainant´s trademarks LE MERIDIEN. The Respondent has simply taken the “Le Meridien” element, and added a second element (“kl”) that is an abbreviation of a geographical term “Kuala Lumpur” and added the gTLD indicator “.com”. UDRP panels consistently have found that incorporation of a trademark in its entirety may establish that a domain name is identical or confusingly similar to a complainant’s trademark. See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717. Further, the Panel subscribes to the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812).

Addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service per se. Addition of the abbreviation “kl” of the geographical term “Kuala Lumpur”, where the Complainant has Le Meridien branded property, the Le Meridien Kuala Lumpur, does not avoid the confusing similarity (Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658). Non-distinctive additions to a trademark do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).

For all the above cited reasons, the Panel concludes that the disputed domain name <lemeridien-kl.com> is identical or confusingly similar to the Complainant’s trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that none of the circumstances mentioned in Policy, paragraph 4(c), are met. The Respondent has not obtained the Complainant’s permission or consent to use the trademarks LE MERIDIEN and it is not a licensee of the Complainant nor is the Respondent otherwise authorized by the Complainant to use the LE MERIDIEN trademarks. Moreover, the Respondent is not authorized to apply for or use any domain name incorporating the Complainant´s trademarks.

Based on the case record, the Panel accepts the arguments of the Complainant that the Respondent’s only use of the disputed domain name is in connection with what appears to be a fraudulent job fraud scam, as an email server for sending fraudulent email messages purportedly on behalf of the human resources department of the Le Meridien Kuala Lumpur hotel, and to redirect all Internet traffic to “www.lemeridien-kl.com” to the Complainant’s official website for the Le Meridien Kuala Lumpur hotel, “www.lemeridienkualalumpur.com” in order to confuse prospective job applicants so that they believe that the job offer and subsequent request for a visa application and money from the applicants is legitimate. The Panel accepts the arguments of the Complainant that the Respondent’s only use of the disputed domain name appears to be in connection with this job fraud scam and the related online data collection scheme designed to collect the names, email addresses and other personal contact details from unsuspecting job applicants. The Panel concludes that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks and company name.

Therefore the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith as the Complainant’s LE MERIDIEN marks are among the most famous trademarks in the travel and leisure industry and enjoy widespread international recognition. The Panel finds it inconceivable that the Respondent was unaware of LE MERIDIEN marks when it registered the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487). Noting the renown of the Complainant’s trademark and the goodwill it has established, the mere fact that the Respondent registered the confusingly similar disputed domain name without authorization suggests bad faith, in the Panel`s view (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Given the fact that the Respondent appears to have used the disputed domain name and its associated email servers to impersonate employees of the Complainant’s Le Meridien Kuala Lumpur hotel is further evidence that the Respondent knew or must have known of the Complainant’s rights in the LE MERIDIEN marks and suggests the Respondent’s opportunistic bad faith in registering the disputed domain name. The Respondent’s exploitation of the Complainant’s goodwill for financial gain by perpetrating what appears to be a fraud on unsuspecting job applicants demonstrates in the view of this Panel the Respondent’s bad faith.

For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case.

Based on the foregoing, the Panel finds that the Complainant has established that (i) the disputed domain name is identical and/or confusingly similar to the Respondent’s well-known LE MERIDIEN marks, (ii) the Respondent has no right or legitimate interest in the disputed domain name, and (iii) the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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

Jonas Gulliksson
Sole Panelist
Dated: August 5, 2011

 

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