WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe des Hotels Meridien v. Koborg.com
Case No. D2014-2177
1. The Parties
The Complainant is Societe des Hotels Meridien, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Koborg.com of Hals, Denmark, internally represented.
2. The Domain Name and Registrar
The disputed domain name <lemeridienmauritius.com > is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. A partial Response was filed with the Center on January 23, 2015. On January 26, 2015, the Respondent submitted a supplemental filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 30, 2015. 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.
On February 4, 2015, the Complainant filed with the Center a purported supplementary filing.
On February 9, 2015, the Respondent (through its General Manager) requested 7 days in which to file a supplemental filing in response to the Complainant’s supplemental filing. A supplemental filing by the Respondent was received by the Center on February 16, 2015.
4. Factual Background
In 1972, Air France established a chain of hotels under the brand LE MERIDIEN. The Complainant is now the successor in title to that brand.
There are more than 100 LE MERIDIEN hotels in more than 50 countries around the world. According to the Complainant, these are luxury and upscale hotels mostly located in the world’s major cities and resort locations. It was recently named by the New York based Luxury Institute as one of the top 15 hotel and resort brands in the world.
In addition to its own marketing efforts, hotels and resorts under the LE MERIDIEN trademark have received extensive coverage in lifestyle and fashion magazines such as Conde Nast Traveler, Luxury Travel, Time Out and Travel + Leisure.
As a result, the Complainant has developed substantial goodwill in connection with the trademark LE MERIDIEN. The Complaint also includes evidence that the Complainant is the owner of a very substantial number of registered trademarks for LE MERIDIEN (in slightly stylized form) in many countries throughout the world. These include but are not limited to:
(a) International Registration No. 555529 (vertical form) in respect of a wide range of goods and services in International Classes 3, 8, 14, 16, 18, 19, 20, 21, 24, 25, 27, 28, 35, 37, 39, 41, 42, registered on April 27, 1990;
(b) CTM No. 000147959 (vertical form) in respect of a wide range of goods and services in International Classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 39, 41, 42, registered on February 10, 2000;
(c) Danish Trademark No. 741561 (horizontal form) in respect of a range of goods and services in International Classes 16, 39 and 42, registered on July 26, 2000;
(d) Danish Trademark No. VR 2008 02417 (horizontal form) in respect of a range of services in International Classes 35, 36, 37, 39 and 43;
(e) Mauritius Trademark No. A/27 NO 254 (vertical form) in respect of goods and services in International Classes 16 and 28, registered on January 14, 1994;
(f) Mauritius Trademark No. 01620/2006 (horizontal form) in respect of services in International Classes 39 and 43, registered on July 26, 2006; and
(g) Mauritius Trademark No. 07248/2009 (horizontal form) in respect of services in International Class 36, registered on April 20, 2009.
The disputed domain name would appear to have been first registered on April 20, 2003.
According to the Response, the administrative contact of the Respondent acquired the disputed domain name in 2010 as part of the takeover or purchase of some 600 or 700 domain names from the then registrant. The address details provided by the administrative contact as registrant at that time provided an address in Mauritius. The Respondent became the registrant, or its registration details were entered into the WhoIs database, on November 1, 2013.
The disputed domain name does not currently resolve to an active website. In 2013 and 2014, the disputed domain name resolved to a website displaying a page “Hacked by 1923 Turk – Grup” which showed a photograph that the Complaint describes with considerable understatement as “highly disturbing”.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
As noted above, the Complainant has sought to file a supplementary filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response. Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
For the most part, the Complainant’s supplemental filing addresses matters raised in the Response which could not reasonably have been anticipated. In these circumstances, therefore, the Panel will include the supplemental filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.
It is not clear why the Respondent required an additional seven days to submit its supplemental filing, having already had the Complainant’s supplemental filing for five days, particularly as the date proposed was after the projected decision date. Having admitted the Complainant’s supplemental filing for the reasons outlined above, however, the Panel considers that in the particular circumstances of this case the Respondent’s supplemental filing should also be admitted in the interests of the overriding requirement of fairness.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. Through its use of the trademark, it has generated a valuable goodwill and reputation in it. The trademark consists of the words “Le Meridien” in slightly stylized lettering either with the word “Le” centred over the word “Meridien” (i.e., vertical orientation) or juxtaposed horizontally along the same line.
This word combination is the first component of the disputed domain name (without the space or the stylization). The disputed domain name also includes the word “Mauritius”, the name of a country or place and the generic Top Level Domain (gTLD) “.com”. The latter may of course be disregarded for the purposes of this inquiry as simply a functional component of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s trademark because:
(a) the two components “le meridien” and “Mauritius” are descriptive or geographical terms and taken together they simply describe “the Mauritius Meridian” (i.e., the location between or crossing the 57th and 58th meridian east;
(b) the Complainant’s trademark does not include the word “Mauritius”;
(c) the Complainant’s trademark registrations do not extend to the services the Respondent provides or intends to provide or, where they do, the registrations occurred after the original registrant registered the disputed domain name in 2003.
The Respondent also contends that the Complainant should have registered a domain name including its trademark and the word “Mauritius” if it wished to forestall someone else registering and using it. Respondents often make this claim, but it must be rejected. At a purely practical level, it would be impossible for any trademark owner to register every conceivable variation of domain names incorporating its trademark or something confusingly similar to it. In recognition of this, the Policy extends protection against domain names which are confusingly similar to the trademark, not just those which are identical to it. This flows from a recognition that the interests of both the trademark owner in its property and of the public against deception or confusion require broader protection against signs which might be mistaken for, or associated with, the trademark in question taking into account the vagaries of recollection.
The Respondent’s defence summarized in paragraph (a) is also misplaced. First, whatever the Respondent’s objections, the Complainant has registered its trademark in many parts of the world. It is not for the Panel to go behind those registrations and declare that the Complainant has no trademark rights in its registered trademark. Secondly, the Panel has considerable doubt that “The Mauritius Meridian” is or can be descriptive at least on the record in this case, especially if, as the Respondent appears to contend, two meridians cross Mauritius or Mauritius lies between them.
Further, the Respondent’s defences proceed on a misapprehension about the nature of the inquiry under the Policy. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the sign comprising the Complainant’s proven trademark: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy. Similarly, if a trademark did include or consist of one or more descriptive terms, that is generally a matter for consideration under the second and third elements of the Policy.
As the Complainant contends, the inclusion of the geographic place name “Mauritius” in the disputed domain name exacerbates rather than dispels the potential for confusion. The addition of such a place name to the Complainant’s trademark is a common way for a business to identify its (in this case) Mauritian operations. The fact that the Complainant has chosen not to use that method is neither here nor there. People using the internet who were aware of the Complainant’s trademark would be very likely to think that could be the case. See e.g. Six Continents Hotels, Inc. v. Dkal WIPO Case No. D2003-0244 <crowneplazaatlanta.com>, Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136 <sheratonsydney.com> (amongst others).
The Respondent seeks to distinguish these decisions on various grounds including that there was no response in either case. The general principles on which these decisions proceed, however, are very well established: see paragraph 1.9 of the WIPO Overview 2.0. In the present case, the term “le meridien” is not directly descriptive of the goods or services for which it is registered and the stylized rendering of the term is not so eccentric as to limit the registration to that stylized presentation. For the notional internet user aware of the Complainant’s trademark, the term “le meridien” will be the dominant part of the disputed domain name and the word “Mauritius” will plainly serve as a geographic descriptor.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that the Respondent has no connection or affiliation with the Complainant. Further, the Complainant has not authorised the Respondent to use the disputed domain name.
The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In these circumstances and bearing in mind the longstanding and extensive nature of the Complainant’s use (including through its predecessor), the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent does not dispute these matters. Instead, it claims it has rights or an entitlement essentially on two grounds. First, it points to the limited nature of the goods and services for which the Complainant’s trademark is registered and says it is operating, or intends to operate, in quite a different field. In this connection, it points out that two of the Complainant’s trademarks in Mauritius were registered after the disputed domain name was first registered in 2003. Secondly, the Respondent says it simply bought the disputed domain name as part of the purchase of an existing business and is using the disputed domain name in connection with a bona fide business.
The argument based on the limited nature of the Complainant’s trademark registrations in Mauritius runs into a number of difficulties. First, as the Respondent acquired the registration of the disputed domain name in 2010, or 2013, as part of a purchase or takeover from the original registrant, the existence of its right or legitimate interest must be demonstrated at that time. See e.g., the cases referred to in the Panel’s previous ruling in Surcouf v. Shen Kaixin, WIPO Case No. D2009-0407 and WIPO Overview 2.0 paragraph 3.7.1 Secondly, having regard to the global nature of the Internet and the potential accessibility of a website or other service operated from the disputed domain name from anywhere in the world, it is also necessary to take into account that a number of the Complainant’s registered trademarks in other jurisdictions do extend to the relevant class and, further, that the Complainant is operating a high profile resort in Mauritius under its trademark. Whether the Respondent can rebut the prima facie case, therefore, turns on whether it has demonstrated it is using, or has made demonstrable steps to use, the disputed domain name in connection with a bona fide offering of goods or services.
According to the Respondent, it acquired the disputed domain name as part of the acquisition of the business of the original registrant. According to the Respondent, the original registrant had been operating a business, the Mauritius Yellow Pages, since 1996. In connection with that business, the original registrant had built up a portfolio of some 600 or 700 domain names including the disputed domain name. Approaching 2010, however, that business was flagging and the Respondent, initially through one of the individuals who is one of its principals, acquired the business including all the domain names with a view towards a long term strategy of creating the largest online network within the Indian Ocean. Following that acquisition, it culled the domain name portfolio down to approximately 400 domain names, still including the disputed domain name, and is in the process of re-branding and re-launching the Yellow Pages business both for Mauritius and the wider Indian Ocean region under a trademark “MYP The colour of marketing” from the domain names <yellow.mu> and <yellowpages.io>. The Respondent’s five year business plan calls for the services to expand into B2B services such as business listings, banner advertising and marketing and sales solutions such as search engine optimization and e-commerce platforms.
The relaunch of the business is due to occur in February 2015. The time since the acquisition has been taken up, according to the Response, with culling the domain name portfolio, registering a company, MYP Online Marketing Ltd, and a trademark in Mauritius in classes 35 and 42.
The central difficulty with the Respondent’s position is that the business it identifies is the Yellow Pages (Mauritius) or, as it appears from exhibit M to the Response, “MYP The colour of marketing”. None of these terms, nor the terms “yellow pages” and “yellow”, however, are the terms in the disputed domain name. The terms used in the disputed domain name are not apt to describe, a classified directory or “yellow pages” business and do not appear to have any natural affinity with the nature or qualities of such a business. The business the Respondent is operating, or proposing to launch, is or may well be a bona fide offering of goods or services under the Policy. However, the genuineness of such a business does not confer any right or entitlement in and of itself to use the term “le meridien Mauritius”.
In its supplemental filing, the Respondent says that its proposed business will be much more than just a directory service – the largest network in the Indian Ocean. It points out that in support of that business it has obtained, or retained, the registration of a number of domain names which consist of a location and some generic term. The examples given are <mascareigneslocations.com>, <vanillaislands.com>, <mauritiusoffshore.com> and <hotels-mauritius.com>.
The last two consist of “Mauritius” a location name and a generic or descriptive term “offshore” or “hotels”. The Panel can readily accept that description of those two domain names but, as already mentioned, has considerable difficulty characterising the disputed domain name as one equally or similarly descriptive. Importantly, the last name, <hotels-mauritius.com>, shows the Respondent’s planned business involves the promotion or advertising of hotel and resort services.
In this connection, it would appear from Annex 4 included in the Complainant’s supplementary filing that before the 1923 Turk – Grup “hacked” the website to which the disputed domain name resolved, the disputed domain name resolved to a website which was essentially a pay-per-click search page promoting hotels in Mauritius, not just hotels operating under the Complainant’s trademark. Such use clearly falls within the Complainant’s trademark coverage. It does not qualify as use in good faith under the Policy since it is use of the Complainant’s trademark, without permission, to attract users to services that are not sourced from the Complainant, particularly as the businesses in question are in competition with the Complainant.
It is of no assistance to the Respondent that it appears this use of the disputed domain name as a pay-per-click vehicle promoting hotels in Mauritius generally started under the Respondent’s predecessor. First, the Respondent apparently made a deliberate choice to retain the disputed domain name when culling the portfolio after the acquisition. It also appears very unlikely that the Respondent was unaware of the Complainant or the Complainant’s trademark rights at that time. The Complainant’s LE MERIDIEN brand is very well known. It operates a resort on Mauritius and has done so for some time. At least one of the Respondent’s founders and principals has spent several years in Mauritius before the acquisition.
The Respondent points out in its supplemental filing that its “hotel” website did not use the Complainant’s logo or trademark. That, however, does not confer legitimacy on the usage as it is nonetheless a use of the Complainant’s trademark which really makes sense only taking into account the significance of the presence of the Complainant’s trademark in the disputed domain name; that is, for its trademark significance.
In these circumstances, the Panel concludes that the Respondent has not rebutted the prima facie case made out by the Complainant and so does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons set out in section 5B above, the Panel has found that the Respondent knew of the Complainant’s trademark when the Respondent registered the disputed domain name. Given the use of the disputed domain name to resolve to a pay-per-click website advertising the hotel services of third parties, the Panel infers that the registration of the disputed domain name was to take advantage of its significance as a trademark indicating the Complainant. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.
The use of the disputed domain name to resolve to the pay-per-click website for almost three years after the acquisition of the disputed domain name constitutes use in bad faith under the Policy. The Panel would find that use for almost three years sufficient for the purposes of the Policy notwithstanding that the website was subsequently “hacked” by the 1923 Turk – Grup. Putting to one side the fact that the website remained “hacked” for some 15 months and was only taken down following a complaint to the third party hosting service by the Complainant – not the Respondent, the Respondent states that it plans to use the disputed domain name in connection with its long term strategy. The use of the disputed domain name by the Respondent in connection with its Yellow Pages business or the provision of other ICT-related services would still qualify as use in bad faith under the Policy. At least some of the proposed services would appear to be covered by some of the services for which the Complainant has registered its trademark in Mauritius. More generally, however, the expression “Le Meridien Mauritius” is not directly descriptive of such services or otherwise naturally and directly associated with, or suggested by, such services. Accordingly, on the record in this case, the natural inference is that it would be use to take advantage of the trademark significance of the disputed domain name.
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 <lemeridienmauritius.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: February 24, 2015
1 These decisions arose in the context of the inquiry under the third limb, registration and use in bad faith. The Panel considers that the same principle should apply in this context. A respondent should not be able to rely on a right or legitimate interest if it had divested itself of that right or interest before registering the domain name in dispute. The present case is also not one where the Respondent is claiming to be able to “tack on” a legitimating interest acquired from some unrelated party after registration.