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Société des Hôtels Méridien v. Mr. Richard Kaminskas [2005] GENDND 1311 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Méridien v. Mr. Richard Kaminskas

Case No. D2005-0459

1. The Parties

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

The Respondent is Mr. Richard Kaminskas, Fine Ink Line Art, Southbury, United States of America.

2. The Domain Name and Registrar

The disputed domain name <meridienwedding.com> is registered with Abacus America Inc. d.b.a. Names4Ever and is hereinafter referred to as the Domain Name.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to Abacus America Inc. dab Names4Ever a request for registrar verification in connection with the Domain Name. On May 4, 2005, Abacus America Inc. dab Names4Ever 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 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2005.

The Center appointed Charles Gielen as the Sole Panelist in this matter on June 10, 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 has registered the Domain Name <meridienwedding.com>.

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 world-wide. 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. 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:

- US trademark MERIDIEN filed on December 9, 1988, and registered since January 21, 2003 under No. 2,675,740 covering services in International Classes 39 and 42, in particular “hotel and restaurant services, travel agency services in the filed of booking and making reservations for temporary lodging”,

- Community trademark Le MERIDIEN registered since February 10, 2000, under No. 147.959, to notably cover the services of “communications; travel agencies; arranging of tours; hotels” in International Classes 38, 39 and 42,

- International trademark Le MERIDIEN registered on July 26, 2000, under No. 741.561, which notably covers “hotel services, organization of trips and excursions, arranging of cruises” and the services of “hotel room bookings for travelers” in Classes 39 and 42,

- French trademark MERIDIEN registered since December 15, 1970, and duly renewed under No. 1.613.199. Said trademark notably designates “hotel services” in International Class 42.

The trademarks consisting in or comprised of the terms MERIDIEN and Le MERIDIEN have been continuously and extensively used since at least 1972 for designating, amongst others, 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 MERIDIEN and Le MERIDIEN marks. As for example, in 2003, the Complainant has invested £ 850 million in a program designed to notably upgrade its facilities. In 2004, the Complainant opened 10 new facilities to the public and undertook the creation of 21 new establishments that just have opened or will open this year. Moreover, Le Méridien Group also invests large amounts of money in advertising campaigns. For example, in 2003, a £ 1 million global advertising campaign has been launched with massive media coverage. Indeed, the ads were featured in high reach media titles such as Conde Nast Traveller, Fortune Magazine, The Economist, The Sunday Time Travel Magazine, Newsweek, Vogue, Entertaining & Travel, etc. In 2004, this previous level of advertising investments was even higher, since it reached a total amount of approximately 1,470 million sterling pounds. Furthermore, the Complainant has also invested a large amount of money in developing its presence on the Internet. The marks MERIDIEN and Le MERIDIEN are therefore widely used, all around the world and, taking into account the above, it can be said that said MERIDIEN and Le MERIDIEN trademarks have reached well-known and famous trademark status, which status has been recognized in court decisions as well as other Panel decisions concerning other domain names using signs identical or similar to the trademarks.

In February 2005, the Complainant discovered that the domain name <meridienwedding.com> had been registered in favor of the Respondent, Mr. Kaminskas.

On March 18, 2005, a cease and desist letter was sent (by mail with acknowledgment of receipt and by email) to the Respondent on behalf of Société des Hôtels Méridien and Méridien S.A., drawing the Respondent’s attention to the Complainant’s rights in the trademarks and domain names consisting in or comprising the terms MERIDIEN or Le MERIDIEN and requesting the transfer of the Domain Name.

It was also stated in the letter that the Complainant offered to reimburse to the Respondent the costs directly associated with acquiring the Domain Name in the present case, upon presentation by the Respondent of the corresponding invoice, the letter sent by the Complainant’s trademark attorney on March 18, 2005, complete with all annexes as they were sent to the Respondent.

The Respondent, Mr. Kaminskas, did reply on March 29, 2005 by e-mail to this cease and desist letter stating on the one hand that, in his view, his registration and use of <meridienwedding.com> does not violate the Complainant’s rights. The Complainant refers to an offer made in that email by the Respondent to transfer the Domain Name at issue to the Complainant, if the Complainant was willing to pay him “some consideration”.

According to the Complainant the Respondent expected much more than just the reimbursement of the costs directly associated with acquiring <meridienwedding.com>, which in itself is evidence of registration and use of the contested domain name in bad faith.

To this e-mail, Complainant’s trademark attorney immediately responded amicably and inquired what consideration Mr. Kaminskas would think adequate, hoping for a reasonable price in order to avoid for the Complainant to have to disburse the costs associated with further legal proceedings, especially since Complainant, due to its notoriety, is a constant victim of cybersquatters and thus forced to invest considerable resources into the defense of its rights, and in particular its well-known MERIDIEN and Le MERIDIEN trademarks, in order to avoid any misuse or dilution of said marks.

As Complainant’s request remained unanswered until April 8, 2005, a final e-mail was sent to the Respondent, requesting that he take position regarding Complainant’s offer of an amicable settlement before April 15, 2005.

According to Complainant the Domain Name is identical or confusingly similar to several trademark or service marks in which the Complainant has rights. The Domain Name <meridienwedding.com> totally reproduces the Complainant’s MERIDIEN mark as well as the most distinctive element of its Le MERIDIEN trademark and domain names. The only differences between these trademarks and the Domain Name, consist in the adjunction of the suffix “.com” and of a generic/descriptive term which is necessary to describe services the Complainant offers to its customers, i.e. wedding. The term wedding describes and relates to services directly offered by the Complainant to its customers, notably through special offers called “Celebration Break” or “Wedding Packages”. Consequently, the addition of the term wedding, 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 name is linked to, affiliated with, or at least endorsed by the Complainant. It results from the above that the disputed domain name <meridienwedding.com> is confusingly similar to the MERIDIEN and Le MERIDIEN trademarks in which the Complainant has rights, according to the Rules para. 3(b)(ix)(1).

The Respondent has no rights or legitimate interests in respect of the Domain Name. In this respect the Complainant points out that it verified if Respondent did hold any rights to the Domain Name at issue, but that none were discovered. The Complainant noted that the Domain Name pointed in the past, and still points today, towards an active website which displays commercial content (domain parking), i.e. advertisement for domain name registration and Web hosting services rendered by third parties. The Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the Domain Name or any portion thereof, nor has he registered the Domain Name, or any portions thereof, as trademarks. Finally, the Complainant asserts that the Respondent does not make a legitimate non-commercial or fair use of the Domain Name.

Furthermore the Complainant states that the Domain Name was registered and is being used in bad faith, first of all because by using the Domain Name, the Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of his website. Secondly, after the Complainant’s cease and desist letter requesting the transfer of <meridienwedding.com>, the prejudice to the Complainant persists, since the Domain Name still links to the same parking website, which, in itself, evidence of a bad faith registration and use (WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows). Moreover, the registration without authorization of a Domain Name that is identical to a famous trademark is in itself evidence of bad faith. The Complainant also points out again that the Respondent, Mr. Kaminskas, on March 29, 2005, offered to transfer the domain name at issue to the Complainant, if the Complainant was willing to pay him “some consideration”, which proves that the Respondent expected valuable consideration in excess of “out of pocket” costs directly related to the acquisition of the Domain Name.

It results from all of the above that the disputed domain name <meridienwedding.com> has been registered and used in bad faith according to Rule para. 3(b)(ix)(3).

B. Respondent

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

6. Discussion and Findings

The Panel finds that the Domain Name shows some similarity to the trademarks of the Complainant but there is doubt as to whether this similarity is sufficient to qualify as confusing similarity.

Although the Complainant asserts rights to two types of trademarks, namely LE MERIDIEN and MERIDIEN, only the first one is used on a wide scale. All evidence submitted by the Complainant shows that what is used is the trademark LE MERIDIEN which is also the trade name of the hotels and the chain. That is where the fame lies: in the combination of these two words. If one types “www.meridien.com” one is immediately redirected to “www.lemeridien.com”. That is how the Complainant wants to be known and is known. The word “meridien” is used by others in the trade for different activities. One can easily find “meridian cars” at “www.meridien.co.uk”, Librairie Le Meridien, Meridien Magnum Tech, Meridien type face, Meridien Research Inc., 105 Meridien L.L.C. and Avid Meridien. Furthermore, the Panel notes that “www.meridienwedding.com” is not used for any particular activity in the area of activities of the Complainant, except maybe for wedding packages that fall within the Complainant’s hotel and catering activities. But that circumstance alone does not make the registration of the Domain Name a bad faith registration, in particular because the Respondent does not seem to offer any such hotel or catering services from the web page, nor any links to such activities.

The complaint does not evidence that the Respondent attempts to divert customers or to attract them by causing likelihood of confusion, there is no pattern of conduct, there is no evidence that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant. Although the Respondent after having received a cease and desist letter offered to transfer the Domain Name for “some consideration”, there is no evidence that the Respondent meant to offer valuable consideration in excess of out of pocket costs. One could maybe say that since the website used by the Respondent does not display any own activities, it was set up primarily to sell or rent the Domain Name, but it is not clear to whom, in view of the fact that “meridien” is a name and/or a mark also belonging to others. Moreover, the Respondent did not take any initiative to sell or transfer the Domain Name to the Complainant. It was only after having received a cease and desist letter that the Respondent mentioned “some consideration”.

This Panel therefore concludes that the Complaint should be denied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Charles Gielen
Sole Panelist

Dated: July 12, 2005