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Société des Hôtels Méridien v. Henry Tsung [2005] GENDND 1082 (14 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Méridien v. Henry Tsung

Case No. D2005-0278

1. The Parties

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

The Respondent is Henry Tsung, Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <lemeridiem.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com. This domain name will hereinafter be referred to as the Domain Name.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005. On March 18, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On March 18, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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”), 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 March 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2005.

The Center appointed Charles Gielen as the sole panelist in this matter on May 31, 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 exploits an international chain of hotels under the name Le Meridien, which name is registered as a trademark in a number of countries and regions in the world. The Respondent registered the Domain Name <lemeridiem.com> on February 2, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant runs a luxury hotel chain called Le Méridien which is very famous in the field of the hotel industry. The Complainant is part of Le Méridien Group which is an internationally famous 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. It should be noted that several hotels are located in South East Asia, the region where the Respondent is located, as for example in Hong Kong, SAR of China, in Thailand, in Singapore, in Malaysia and in Indonesia. The Complainant or its subsidiary company, Méridien S.A., is in particular the owner of many trademarks and domain names, comprised of or comprising the terms “Meridien” or “Le Meridien”, registered worldwide the trademark LE MERIDIEN.

The Complainant notably owns the following trademarks:

- International trademark LE MERIDIEN registered on July 26, 2000, under No. 741.561, designating various countries and particularly China and Vietnam which are neighbouring countries of Taiwan, Province of China. Said International trademark covers various goods and services in Classes 16, 39, and 42, notably “hotel services; motel services; hotel room bookings for travelers; provision of food and drink; cafeterias; cocktail lounge services and services provided by brasseries; catering services” in Class 42 (currently 43).

- Taiwanese trademark LE MERIDIEN registered on August 16, 1987, under No. 26055 and duly renewed on August 16, 1997, designating services of Class 42 (currently 43), notably “hotel, restaurants, hotels and restaurants management, booking of room services”.

- United States trademark LE MERIDIEN filed on January 21, 1987, under No. 73/640,769 and registered on December 31, 2002, under No. 2,667,456 covering various goods and services in Classes 16, 18, 21, 24, 25, 35, 39, 41, and 42, notably “hotel, restaurant and bar services; hotel and restaurant management; booking of room services; hotel reservation services” in Class 42 (currently 43).

- Community trademark LE MERIDIEN filed on April 1, 1996, and registered on February 10, 2000, under No. 000147959 covering various goods and services in Classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 38, 39, 41, and 42, notably “hotels, restaurants, cafeterias, bars, night clubs, rental of rooms, hotel reservations” in Class 42 (currently 43).

- French trademark LE MERIDIEN registered since February 9, 2000, under No. 00/3.006.394, designating various goods and services in Classes 3, 8, 16, 18, 19, 21, 24, 25, 35, 37, 38, 39, 41, and 42, notably “hotel services; motel services; reservation of hotel rooms for travellers; restaurant services; cafeterias; cocktail lounge services” in Class 42 (currently 43).

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. As for example, in 2003, the Complainant has invested 850 million pounds sterling in a programme designed to notably upgrade its facilities. Moreover, the Complainant also expends considerable amounts of money on advertising campaigns. For example, in 2003, a 1 million pounds sterling global advertising campaign was launched with massive media coverage. Indeed, the advertisements were featured in high reach media titles such as Conde Nast Traveller, Fortune Magazine, The Economist, The Sunday Times Travel Magazine, Newsweek, Vogue, Entertaining & Travel, etc. The corresponding press-release is also provided. In 2004, the level of advertising expenditures was even higher, since it reached a total amount of 1,470 million pounds sterling. Furthermore, the Complainant has also invested considerable money in developing its presence on the Internet.

The Complainant and its subsidiaries and affiliates are the 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. This website was voted the “Best Hotel & Lodging Industry” site in 2003 by the Web Marketing Association and it also won a Golden Click Gold Web Award at the Hospitality Sales & Marketing Association International Adrian Awards in New York in 2004. The mark LE MERIDIEN is therefore widely used, all around the world and taking into account the above, the Complainant is of the opinion that said mark LE MERIDIEN has reached well-known and famous trademark status. The Complainant asserts that the Domain Name is confusingly similar to its trademark. The Domain Name quasi-totally reproduces the mark LE MERIDIEN in which Complainant has rights, the only differences being the adjunction of the suffix “.com” and the substitution of the letter ‘m’ for the letter ‘n’ at the end. In this context, the Complainant refers to a case involving the Complainant (Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849), in which the panel held that the domain name <lemeriden.com> (the second letter ‘i’ was missing) was similar to the trademark LE MERIDIEN in stating that “the first difference has very little effect on the overall impression made by the Domain Name, because all other letters are identical, and the difference is in the final syllable of the Domain Name”.

Furthermore, the Complainant asserts that the Respondent does not have any rights to or legitimate interests in the Domain Name. In this respect, the Complainant argues that the Respondent is not using the domain name <lemeridiem.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 the Domain Name to unfairly trade on Complainant’s name and mark, by associating the Domain Name with a list of words (some of them being generic words matching the Complainant’s activities, i.e. “Hotels” / “Reservations”, some others being locations - Bora Bora, Nice, Cairo or Dubai - where the Complainant has hotels) and links resolving to online stores (for example: “www.orbitz.com”, “www.expedia.com”) offering the same type of services that the Complainant sells, i.e. booking of hotel rooms.

In addition, the Complainant argues that, since the Respondent listed its name as being Henry Tsung in the WHOIS domain name registration information, the Respondent is not commonly known by the domain name <lemeridiem.com>.

Finally, according to the Complainant, the Respondent has registered the disputed domain name in order to prevent the owner of the mark from reflecting same in a corresponding domain name. It is clear that the Respondent’s registration and use of the disputed Domain Name are part of a flagrant pattern of conduct, since the Respondent is engaged in a pattern of registration of a series of domain names based on well-known trademarks. Indeed, and as far as the Complainant is aware, the Respondent has already been involved in at least twelve cases, and in each of these cases, the Respondent has been found to have registered and used the disputed domain names in bad faith. The concerned cases are the following:

- WIPO Decision First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103, decision of April 22, 2004;

- WIPO Decision Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274, decision of June 4, 2004;

- WIPO Decision Swiss Reinsurance Company v. Henry Tsung, Case No. D2004-0969, decision of January 25, 2005;

- WIPO Decision MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com, Case No. D2004-1034, decision of February 1, 2005;

- WIPO Decision Go Daddy Software, Inc. v. Henry Tsung, Case No. D2004-0980, decision of January 4, 2005;

- NAF Decision Whitney National Bank v. Henry Tsung, Claim No. FA0401000227652, decision of March 3, 2004;

- NAF Decision America West Airlines, Inc. v. Henry Tsung, Claim No. FA0401000232953, decision of March 16, 2004;

- NAF Decision The Neiman Marcus Group, Inc. v. Henry Tsung, Case No. FA0403000243464, decision of April 6, 2004;

- NAF Decision Bausch & Lomb Incorporated v. Henry Tsung, Claim No. FA0403000247973, decision of May 5, 2004;

- NAF Decision Travelers Express Company, Inc. v. Henry Tsung, Claim No. FA0405000275511, decision of July 7, 2004;

- NAF Decision SmartBargains.com L.P. v. Henry Tsung, Claim No. FA0408000313576, decision of September 22, 2004;

- NAF Decision Hyatt Corporation v. Henry Tsung, Claim No. FA0411000367095, decision of January 5, 2005.

Moreover, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Domain Name points to a website featuring links as well as numerous “pop under” advertisements, quasi-totally reproducing the Complainant’s trademark and redirecting Internet users to online stores offering identical services to those offered by the Complainant. Indeed, the Respondent intentionally registered a domain name that contains the Complainant’s well-known mark for its commercial gain, since the Respondent’s domain name diverts Internet users who seek Complainant’s LE Meridien mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to this Panel, there is confusing similarity between the Domain Name and the trademarks of the Complainant. This is a typical example of “typo-squatting”: using one different letter to try to get around the literal text of the trademark. ‘Lemeridiem’ is therefore similar to ‘Le Meridien’.

B. Rights or Legitimate Interests

The Panel notes that none of the contentions made by the Complainant have been contested by the Respondent. It is clear that the Respondent was, at the moment of registering the Domain Name, not commonly known by the Domain Name. Furthermore, before the dispute arose, the Domain Name was not used in connection with a bona fide offering of goods or services. From the website of the Respondent, it appears that visitors are directed to all kind of travel services, including to places where the hotels of the Complainant are established, as well as to booking services of others such as Expedia.com. This is done through linking to third parties, with the purpose of gaining profit. The Panel is therefore convinced that the Respondent does not have any rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

From the facts as presented by the Complainant that are uncontested by the Respondent, the Panel derives a bad faith impression of the Respondent when registering and using the Domain Name. From earlier decisions in other URDP cases in which the Respondent was involved, it is clear that the Respondent did register and use several other domain names that were considered confusingly similar to other brands. Some of these cases concern so-called typo-squatting cases, in which clear misspellings of famous marks were intentionally registered as domain names. The Respondent therefore has shown a pattern of bad faith conduct. It is bad faith conduct since by using misspelled famous marks confusion arises as to the origin of the services that are being offered on the website of the Respondent. By linking to Internet services like ”www.expedia.com” using the Domain Name, the impression is easily established that the Respondent’s website is part of the business of the Complainant. So, it is in fact through a combination of the elements mentioned in paragraphs 4(b)(ii) and (iv) of the Policy that the Panel concludes that there is bad faith on the side of the Respondent.

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 <lemeridiem.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist

Dated: June 14, 2005