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Société Des Hôtels Méridien v. wwwenterprise, Inc. [2005] GENDND 1274 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Des Hôtels Méridien v. wwwenterprise, Inc.

Case No. D2005-0546

1. The Parties

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

The Respondent is wwwenterprise, Inc., Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <lemeridienhotels.net> and <lemeridienhotels.org> are registered with OnlineNIC, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2005. On May 23, 2005, the Center transmitted by email to OnlineNIC, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On May 25, 2005, OnlineNIC, Inc. d/b/a China-Channel.com 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 Complainant in its Complaint dated March 23, 2005, noted that (at the time of the Complaint) OnlineNIC’s WHOIS database indicated that the domain name <lemeridienhotels.org> is not registered with them. The Complainant, however, exhibited listings from other WHOIS databases - INDOMCO, Easywhois.com, Network Solutions, InterNIC and PIR.org, which all listed the domain name <lemeridienhotels.org> as unavailable and showed that it is registered with OnlineNIC (Annex 1(b) to the Complaint). The Complainant further added that the domain name <lemeridienhotels.org> definitely existed since it was active, it pointed to a website similar to that of <lemeridienhotels.net>, and it displayed commercial content (Annex 18(b) of the Complaint). The Complainant therefore inferred that there has been a mere oversight in OnlineNIC’s WHOIS database and respectfully requested correction thereof. This administrative deficiency was corrected because in the above mentioned verification response email to the Center of May 25, 2005, OnlineNIC confirmed that the Respondent is listed as the registrant of the domain names at issue and provided Respondent’s contact details.

In response to a notification by the Center that the Complaint must expressly consent to jurisdiction of the courts at the location of the domain-holder’s address, the Complainant filed the amendment to the Complaint on June 6, 2005. The Center verified that the Complaint together with the amendment to 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 June 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2005.

The Center appointed Mladen Vukmir as the sole panelist in this matter on July 14, 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 is part of Le Méridien Group which is an internationally famous hotel Group with a portfolio of over 130 luxury and upscale hotels in 56 countries worldwide. The majority of its properties are located in the world’s capital cities, as well as other major cities and resorts throughout Europe, the Americas, Asia-Pacific, Africa, the Middle East and Central Asia. The Complainant has been awarded a number of prestigious international awards and is highly ranked on the new Luxury Brand Status Index survey conducted by the New York City based Luxury Institute. The Complainant provided the Panel with a number of exhibits to confirm this fact, in particular in Annexes 3 and 4 of its Complaint.

The Complainant is the owner of numerous trademarks for MERIDIEN and LE MERIDIEN registered in over 80 countries, notably designating hotel, restaurant and travellers’ transport services, as per enclosed copy of the Complainant’s worldwide trademark portfolio.

Among others, the following are some of the trademarks applicable:

US 2445356 with the priority date April 24, 2001;

US 2675740 with the priority date January 21, 2003;

CTM 147959 with the priority date February 10, 2000; and

FR 1613199 with the priority date December 15, 1970.

Besides these, the Complainant showed the Panel additional trademark and domain name registrations, all registered by the Complainant or its subsidiary company, Méridien S.A. (Annexes 5, 6 and 7).

5. Jurisdictional Basis

The Panel is satisfied that this dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the dispute.

The registration agreement (Annex 2 of the Complaint) incorporates the Policy. The disputed domain names were registered on July 13, 2004 (<lemeridiens.net>) and March 22, 2005 (<lemeridiens.org>) with OnlineNIC, Inc., and according to point 12 of OnlineNIC’s Registration Agreement, the Policy is applicable to the domain names at issue.

6. Parties’ Contentions

A. Complainant

The Complainant asserts that the “Le Méridien” hotel chain is famous and well-known throughout the hotel industry and around the world in general with its properties located in the world’s capital cities, as well as other major cities and resorts throughout Europe, the Americas, Asia-Pacific, Africa, the Middle East and Central Asia.

The Complainant further contends that the marks MERIDIEN and LE MERIDIEN are used all around the world and that it can be said that MERIDIEN and LE MERIDIEN trademarks have reached well-known and famous trademark status.

The Complainant further notes that Le Méridien Group also invests large amounts of money in advertising campaigns (£1Mio in 2003, £1,470Mio in 2004), which are featured in high profile media titles such as Conde Nast Traveller, Fortune Magazine, The Economist, The Sunday Time Travel Magazine, Newsweek, Vogue, Entertaining & Travel.

Furthermore, the Complainant asserts that it has also invested a large amount of money in developing its presence on the Internet where the Complainant and its subsidiaries and affiliates are the owners of almost 300 domain names. Most of these domain names point to the main official website “www. lemeridien.com”. This website provides all kinds of information regarding the hotels of LE MERIDIEN and the MERIDIEN Group and notably offers the possibility to consumers to book a hotel room online.

The Complainant asserts that in March 2005, it discovered that the domain names <lemeridienhotels.net> and <lemeridienhotels.org> had been registered by the Respondent, in spite of the fact that the use of the trademarks LE MERIDIEN and MERIDIEN by the Respondent had not been authorized in any way by Société Des Hôtels Méridien or any of its subsidiaries, companies, affiliates or representatives.

The Complainant concludes that:

(a) the disputed domain names <lemeridienhotels.net> and <lemeridienhotels.org> are identical, or at least confusingly similar to the LE MERIDIEN and MERIDIEN trademarks in which the Complainant has rights,

(b) the Respondent has no rights or legitimate interests in the domain names <lemeridienhotels.net> and <lemeridienhotels.org>,

(c) the disputed domain names <lemeridienhotels.net> and <lemeridienhotels.org> have been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, this fact does not mean that the Complainant may be awarded the requested remedy by default. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy.

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) the domain name is identical or confusingly similar to trademark in which complainant has rights, and

(ii) respondent has no rights or legitimate interests in respect of the domain name, and

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

A. Identical or Confusingly Similar

The Complainant has proven that it is the owner of rights in the trademarks MERIDIEN and LE MERIDIEN.

It is now well established that the generic top-level domain, in this case “.net” and “.org”, must be excluded from consideration as being a generic or functional component of the domain name when making a finding on the first element. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)

The Panel is satisfied with the Complainant’s argumentation that the disputed domain names <lemeridienhotels.net> and <lemeridienhotels.org> integrate the Complainant’s trademark LE MERIDIEN in its entirety and that it is likely that the consumers will think that the domain names are a variation of Complainant’s trademarks.

The mere adjunction, within the contested domain names, of terms which are generic/descriptive does not necessarily cast aside the likelihood of confusion between the disputed domain names and the trademarks. The Complainant invoked in this regard Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, where it was held that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark”. The Panel accepts the Complainant’s argument that the addition of the term “hotels”, which is a generic/descriptive term relating to the field of activity in which the Complainant operates, as well as to services the Complainant offers to its customers, does not avoid the confusion but, on the contrary, is likely to enhance it and to lead the consumers to believe that the disputed domain names are linked to, affiliated with, or at least endorsed by the Complainant.

For all the foregoing reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks MERIDIEN and LE MERIDIEN.

B. Rights or Legitimate Interests

The Complainant argues that prior to notice to the Respondent of this dispute, the Respondent was not using the disputed domain names in connection with any bona fide offering of goods or services, nor had he made preparations to do so. The Complainant points to the fact that both disputed domain names link to active websites which display advertisements (domain parking). The Complainant further asserts that, when visiting the websites accessible under the disputed domain names, many pop-up advertisements appear, amongst others for programs known to contain adware/spyware. The Complainant concludes that there is obviously neither a legitimate use of the contested domain names, nor is there a use or even intention to use in connection with a bona fide offering of goods and services because:

- The Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the domain names <lemeridienhotels.net> and <lemeridienhotels.org> or any portion thereof, nor has it registered the domain names, or any portions thereof, as trademarks, while on the contrary, the Complainant is widely known by the public all over the world, especially regarding hotels.

- The Complainant has never assigned, licensed, sold or transferred any rights in its LE MERIDIEN or MERIDIEN trademarks to the Respondent. The Complainant has not granted the Respondent permission or consent to use or register its marks or similar marks as domain names.

- The Respondent does not make a legitimate non-commercial or fair use of the domain names but instead prevents the Complainant from making use of said domain names for its own offers, and draws Complainant’s clients to websites, advertising for third parties.

- The Respondent’s use of <lemeridienhotels.net> and <lemeridienhotels.org> diverts Internet users who intend to access the Complainant’s offering of services when they type the disputed domain names in their web browser. This is not a legitimate use.

- The marks LE MERIDIEN and MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent cannot have ignored that he was registering domain names which infringe on the rights of the Complainant.

Once a complainant has established a prima facie case, the burden of proving rights to and legitimate interests in a domain name shifts to a respondent who has to prove the existence of, without limitation, any of the three circumstances listed in Paragraph 4(c) of the Policy. The Panel finds that the Complainant has put forward supported contentions and, absent any reply from the Respondent, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant points to the fact that Respondent indicated false contact details when registering the domain names at issue. This is claimed to be not only contrary to OnlineNIC’s terms of use, but also an indication of bad faith, shielding the Respondent from any pursuit by the Complainant.

The Complainant argues that by using the disputed domain names, the Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of these domain names and websites accessible thereunder in the Internet users’ minds.

The Complainant argues that the current websites linked to the disputed domain names amount to an unfair exploitation of <lemeridienhotels.net> and <lemeridienhotels.org>, since Respondent most likely receives payment for every click on a link displayed on these websites, thus unjustly enriching himself to the detriment of the Complainant.

The Complainant states that the Respondent must or at least should have had knowledge of the Complainant’s trademarks when registering the contested domain names. The Panel finds that it is indeed unlikely that the Respondent would have randomly registered the domain names <lemeridienhotels.net> and <lemeridienhotels.org> which comprise the Complainant’s trademark and a descriptive/generic term from the exact economic field the Complainant operates in and having an identical structure to some of the Complainant’s domain names, such as <lemeridienhotels.com>.

The Panel finds that the Respondent intentionally attempts to attract for commercial gain, internet users to his sites at the disputed domain names by creating a likelihood of confusion with the Complainant’s mark. Policy Paragraph 4(b)(iv).

For all the foregoing reasons the Panel concludes that the Respondent registered and used the domain names <lemeridienhotels.net> and <lemeridienhotels.org> in bad faith.

8. 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 names, <lemeridienhotels.net> and <lemeridienhotels.org> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist

Dated: July 26, 2005