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Société des Hôtels Méridien v. Modern Limited - Cayman Web Development [2004] GENDND 752 (14 June 2004)

1. The Parties

The Complainant is Société des Hôtels Méridien, Paris, France, represented by Cabinet Degret, France.

The Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman GT, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <lemeridian.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2004. On May 3, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 4, 2004, eNom 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 May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2004.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on June 2, 2004. 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 Société des Hôtels Méridien runs a luxury hotel chain called Le Meridien, which runs hotels all over the world. Complainant Société des Hôtels Méridien is a part of the Le Meridien Group which is an international hotel group with a portfolio of 130 luxury and upscale hotels in 56 countries worldwide.

The hotel chain Le Meridien is well known in the hotel industry and the Complainant’s Group has during the last years won various international awards.

Société des Hôtels Méridien and its subsidiary company, Méridien S.A., are owners of several trademark registrations in more than 80 countries throughout the world, see Annex 6 to the Complaint. The registered trademark is “LE MERIDIEN.” The first registration of the mark was done in France in 1986. Complainant has used the mark LE MERIDIEN for hotel services since at least 1972.

Société des Hôtels Méridien and its subsidiaries, companies and affiliates also own almost 300 registered domain names containing the word “MERIDIEN,” see Annex 7 to the Complaint.

The Respondent registered the disputed domain name with the registrar eNom on May 19, 2001.

The Complainant discovered the domain name registration in March 2003. On October 10, 2003, the Complainant sent a cease and desist letter to the Respondent, requesting transfer of the disputed domain name, see Annex 8 to the Complaint. No response was made by Respondent to this letter.

Complainant filed the Complaint with the Center on April 30, 2004.

5. Parties’ Contentions

A. Complainant

The hotel chain Le Meridien is an internationally famous group of hotels.

The trademark LE MERIDIEN has been continuously and extensively used since at least 1972. Massive marketing and promotional efforts of the Complainant has built considerable goodwill in the mark.

Complainant also owns around 300 domain names, of which almost all point to the official website of the Complainant, “www.lemeridien.com.” The mark is thus widely used all around the world. The trademark LE MERIDIEN has for all these reasons reached a well-known and famous trademark status.

The domain name in dispute is confusingly similar to the Complainant’s trademark.

The domain name reproduces the mark LE MERIDIEN, the only difference being the addition of the Top Level Domain “.com” and the substitution of the letter “A” to the letter “E.”

The addition of the suffix “.com” is of no significance and does not distinguish the domain name from Complainant’s trademark.

Further, the mere substitution of the letters “A” and “E” constitutes a minor difference phonetically and visually. The domain name is simply a misspelling of the trademark, and Internet users may easily make a typing mistake when trying to connect to Complainant’s site.

This case is a typical case of “typo-squatting.” Only one letter differs between the domain name and the trademark. That is not sufficient to distinguish the domain name from the mark, and the domain name is thus confusingly similar to the trademark as described in the Policy paragraph 4(a)(i).

Respondent is not using the domain name in connection with a bona fide offering of goods or services. This is proved by the fact that the domain name does not point to any active website. The domain name in dispute only points to a general page with links to other websites.

Respondent has never been and is not currently known by the domain name or part thereof. Complainant has not assigned, licensed, sold or transferred rights in the mark to the Respondent, or granted Respondent permission to use the mark.

The Respondent is not making a legitimate non-commercial or fair use of the domain name. On the contrary, Respondent is using the domain name in dispute to unfairly trade on Complainant’s name and mark, by diverting Internet users to his site. From that site users are redirected to other sites offering goods or services, by means of hyperlinks on Respondent’s website displayed as generic words.

This practice constitutes a real risk of damage for the Complainant, as Internet users trying to book a room with one of Complainant’s hotels will be mislead, and offered to book a room from one of the Complainant’s competitors. Respondent’s website is merely a vehicle for generating revenue.

The fact that Respondent is the current holder of several domain names that consist of names of famous people or businesses is proof Respondent’s bad faith. Respondent has several times been part in proceedings under the Policy, and has not proceeded in any of these cases.

As the trademark LE MERIDIEN is so famous, the Respondent could not ignore that he was registering a domain name incorporating rights of the Complainant.

The Respondent thus has no rights or legitimate interests in the domain name according to the Policy Paragraph 4(a)(ii).

Respondent has registered the disputed domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name. Respondent has engaged in a pattern of such conduct.

Respondent has also displayed a pattern of cyber-squatting as evidenced by the numerous proceedings against him under the Policy. The Respondent has been held to hold abusive registrations in twelve previous cases. This type of behavior evidences bad faith registration.

The domain name in dispute is used by the Respondent to create a likelihood of confusion, in order to intentionally attract, for commercial gain, Internet users to his website. The website merely displays a collection of links to other websites and online stores, notably in the field of hotel industry. These websites belong to competitors of the Complainant, or to cheap hotel offers which are capable of tarnishing the reputation of the Complainant.

Passive holding of the domain name does also constitute bad faith.

The fact that the domain name registered is a typo-squatting case constitutes in itself bad faith registration and use.

Registration without authorization of a domain name that is identical to a famous trademark is in itself evidence of bad faith. The Respondent’s actions amounts to “opportunistic bad faith,” as Respondent has no connection with the world of hotel industry and the mark is well known.

Lastly, it is highly unlikely that Respondent was not aware of the Complainant’s pre-existing rights on registration of the domain name in dispute. The Respondent has registered and is using the domain name in bad faith according to the Policy Paragraph 4(a)(iii).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has trademark rights to the mark LE MERIDIEN. The mark is registered in several countries all over the world. Registrations include Community registration No. 000147959 of April 1, 1996, and International registration No. 741.561 of July 26, 2000.

The domain name in dispute is very similar to the Complainant’s trademark, the only difference being the second last letter being an “A” instead of an “E.”

The Complainant claims that this is a typical case of so-called “typo-squatting.” The practice of typo-squatting is described in Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994 as a practice in which a respondent registers domain names with slight misspellings of a complainant’s mark in order to divert Internet traffic.

The Panel agrees that the present case is a case of typo-squatting. The Respondent has merely substituted the vowel “E” in Complainant’s mark with the vowel “A.” It is fairly easy for an Internet user to misspell the mark of the Complainant, and thus arriving at the website of the Respondent instead of that of the Complainant.

Further, the phonetic differences between the to ways of spelling the word are minor. The significance of this was emphasized in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.

The difference the substituted “A” makes, is of insufficient phonetic and visual significance to distinguish the domain name from the trademark in question.

Hence, the Panel finds that the domain name in question is confusingly similar to a mark in which the Complainant has rights, and the prerequisite in the Policy, Paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Complainant in the Complaint asserts that the Respondent has no rights or legitimate interests in the domain name in dispute.

In the present case, it would be difficult for Complainant to prove that an authorization to register and use the domain name at issue has not been granted, at the same time as Respondent easily could have done so, pursuant to Paragraph 4(c) of the Policy.

Where the Respondent has failed to give any response, it is therefore, according to practice under the Policy, considered sufficient for Complainant to make a prima facie showing of the fact that Respondent lacks rights or legitimate interest in the contested domain name, see as example VENTURUM GmbH v. Coventry Investments Ltd., Domain Collection Inc., WIPO Case No. D2003-0405 and Diageo Ireland, Arthur Guinness Son & Co. (Dublin) Limited v. The Director, WIPO Case No. D2003-0885.

Complainant’s assertion is first of all supported by the claim that the Respondent did not use the domain name for bona fide offering of goods or services.

According to the Complaint, the website to which the domain name is connected, displays a collection of links to other websites. The links are displayed as generic words, indicating what type of goods or services one will be offered if clicking on the hyperlink. At the time of filing of the Complaint, these generic categories were such as “Travel, Financial Planning and Health and Beauty,” and subcategories such as “Car Rental, Hotels, Credit Cards and Weight Loss Drugs.”

That such websites which are blank but for containing links to other sites offering goods or services is not a legitimate use of the domain name, was observed in the case of the National Arbitration Forum No. 95396 Computer Doctor Franchise System Inc. v. The Computer Doctor.

It seems clear to the Panel that the intention behind the Respondent’s website is to divert Internet traffic away from the site belonging to the Complainant, in order to obtain own commercial gain by redirecting the Internet users to other sites offering goods and services. Such behavior does not constitute a bone fide offering of goods an services, or a legitimate noncommercial or fair use of the domain name.

The Respondent has not produced evidence as to prove that they have been granted permission to register a mark similar to the Complainant’s as a domain name, or that Complainant has assigned, licensed, sold or transferred any rights to Respondent.

The Respondent has neither produced evidence showing that they are or have been commonly known by the domain name, or is conducting business or other activity connected to the generic meaning of the word “meridian.”

The Panel itself has also investigated the website connected to the domain name in question, and can find nothing on the site making probable Respondent’s rights or legitimate interests in the domain name.

In the circumstances, the Panel is thus satisfied that Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the contested domain name.

Hence, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name, and the prerequisites in the Policy Paragraph 4(a)(ii) are therefore fulfilled.

C. Registered and Used in Bad Faith

Complainant is of the opinion that the Respondent has registered the disputed domain name in order to prevent Complainant from reflecting their trademark in a corresponding domain name, and thus has registered and is using the domain name in bad faith.

The Panel does not agree to this contention. Such an argument is not appropriate in a case of typo-squatting. As the domain name is not identical to Complainants trademark, it is difficult to allege that the Respondent’s intention is to obstruct the trademark owner’s registration of his mark as a domain name.

The Complainant also makes reference to that the Respondent has been engaged in a pattern of cyber-squatting, and that this in itself constitutes evidence of bad faith in this case.

The Panel finds that this sort of behavior not in itself is a clear and unambiguous proof of Respondent’s bad faith in a case of typo-squatting, and when registering and using this particular domain name.

However, the Complainant has shown that the Respondent has attempted to attract Internet users to his own site, for his own commercial gain, by creating a likelihood of confusion between the mark and the domain name.

As the Panel itself has observed, the website corresponding to the domain name contains a variety of links displayed as generic words sorted by category. As these links lead to sites offering goods and services, some of which are even of similar character as services offered by Complainant, the Panel is convinced that this website with all probability is intended to generate revenues for the Respondent.

A Respondent capitalizing on the confusion between the mark and the domain name has been found to constitute evidence of bad faith in numerous cases under the Policy, see as example Habib Bank AG Zurich v. Dave West, WIPO Case No. D2004-0041.

The question of whether use of a domain name is done in bad faith has been considered especially clear if the site contains links to websites belonging to competitors of the Complainant, see United Airlines, Inc v. United Airline Dot Com., WIPO Case No. D2002-0835. In the present case, the Respondent’s website redirects Internet users also to several sites offering hotel booking.

The Panel is not in doubt that the Respondent was aware of Complainant’s trademark when registering the domain name, as Complainant’s mark is very well known throughout the world. The Panel therefore finds that the registration of the domain name with a “misspelling” of the mark was intentional.

Further, the mere act of typo-squatting has often been recognized as evidence of bad faith registration and use. The Panel makes reference to Paragon Gifts, Inc. v. Domain Contact, WIPO Case No. D2004-0107, National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, citing WIPO Case No. D2002-1011 and NAF Case No. 139718 Medline, Inc. v. Domain Active Pty., Ltd.

Hence, the Panel finds that the Respondent has registered and is using the domain name in bad faith, and the prerequisites in the Policy Paragraph 4(a)(iii) are fulfilled.

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, <lemeridian.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: June 14, 2004