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Société des Hôtels Méridien v. Mr. Bekir Dogan [2005] GENDND 1455 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Méridien v. Mr. Bekir Dogan

Case No. D2005-0691

1. The Parties

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

The Respondent is Mr. Bekir Dogan, Istanbul, Mecidiyekoy, Turkey, represented by Hakan Yavrucu, Turkey.

2. The Domain Names and Registrar

The disputed domain names <meridienint.com> and <meridienint.info> (the “Domain Names”) are registered with Dotster, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2005. On June 30, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On July 1, 2005, Dotster, Inc. 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 July 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2005. The Response was filed with the Center on July 26, 2005.

The Center appointed Alfred Meijboom as the sole panelist in this matter on August 4, 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.

On July 28, 2005, the Complainant submitted an additional document containing a message of Respondent’s representative of July 14, 2005, which Complainant’s representative had mistakenly considered to be the Response.

4. Factual Background

Since 1972, the Complainant has been running an international luxury hotel chain, which won international awards. The Le Meridien Group to which Complainant belongs operates more than 130 luxury and upscale hotels in 56 countries worldwide, the majority of which are located in the world’s capital cities and other major cities in Europe, Asia, the Americas and Africa.

The Complainant and its subsidiary Meridien S.A. own trademarks LE MERIDIEN in many countries worldwide, including the European Union and Turkey, for various good and services. The Complainant also owns numerous domain names comprising “Le Meridien” and “Meridien”.

The Respondent is the sales director of a digital technology company at Istanbul, Turkey.

The Domain Names were registered on April 9, 2003, <meridienint.com> and December 25, 2004, <meridienint.info>.

5. Parties’ Contentions

A. Complainant

The Complainant has been operating an international chain of luxury hotels since 1972. As of 1986 the Complainant registered LE MERIDIEN for several goods and services in many countries. The Complainant registered the device mark LE MERIDIEN for Turkey as International Trademark 741561 on July 26, 2000, and as national Turkish trademark 97490 on January 15, 1987. Among many other registrations, the Complainant is also owner of the Community device mark 147959 LE MERIDIEN of April 1, 1996. Further, the Complainant has a large portfolio of domain names which incorporate “Le Meridien” and “Meridien”.

The Complainant discovered that the Respondent, who was not authorized to do so by the Complainant, registered the Domain Name <meridienint.info> in April 2005. The Complainant sent the Respondent a cease and desist letter on May 17, 2005, requesting the Respondent to transfer the aforementioned Domain Name to the Complainant, and offering the Respondent to reimburse the costs directly associated to the registration of this Domain Name.

On May 30, 2005, the Respondent replied by informing the Complainant that he owned both Domain Names, and contesting Complainant’s rights to the Domain Names. The Respondent did, however, indicate that it would be willing to consider an amicable solution.

On June 2, 2005, the Complainant responded by arguing that the Domain Names were clearly infringing Complainant’s trademarks to which the Respondent had simply added the descriptive suffix “int” which stands for “international”. Attached to this letter, was a decision of a Turkish court which recognized that the trademarks of Complainant are well-known in Turkey.

According to paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain a decision to the transfer of the Domain Names, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:

(i) the Domain Names are identical or confusingly similar to trademarks or service marks to which the Complainants have rights.

The Complainant is the owner of numerous trademarks LE MERIDIEN, including trademark registrations in Turkey, which have been used since at least 1972 for designating, inter alia, hotels and hotel services which are rendered by the Complainant on an international level. The Complainant invested heavily in global advertisement campaigns in international magazines. Further, the Complainant also invested a large amount of money in developing its presence on the Internet. The Complainant and its subsidiaries and affiliates own almost 300 domain names which include “Le Meridien” or “Meridien” and most of them link to the main official website of the Complaint, “www.lemeridien.com”. The Complainant’s business through the Internet is increasing constantly.

The LE MERIDIEN trademarks have been widely used and have reached a well-known and famous trademark status. This is illustrated by various French court decisions, and it was recognized by the court of Ankara, Turkey. Further, six WIPO decisions recognized this status of the LE MERIDIEN trademarks (SOCIÉTÉ DES HOTELS MERIDIEN v. UNITED STATES OF MORONICA, WIPO Case No. D2000-0405; Société des Hôtels Méridien v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0321; Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Société des Hôtels Méridien v. EFT, WIPO Case No. D2004-0995; Société des Hôtels Méridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201).

The Domain Names totally reproduce Complainant’s “Meridien” as well as the most distinctive element of the LE MERIDIEN trademarks. The only differences are the suffixes “.info” and “.com” which have no significance and the suffix “int” which commonly stands for “international” and is insufficient to set aside the likelihood of confusion. On the contrary, the use of “int” enhances the likelihood of confusion because it is a descriptive term used to describe the Complainant and its activities.

Hence, the Domain Names are identical, or at least confusingly similar to the MERIDIEN and LE MERIDIEN trademarks of the Complainant.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names.

The Domain Name <meridienint.info> shows an active webpage with commercial content, including pop-up screens and programs that contain adware and spyware. The Domain Name <meridienint.com> is inactive.

There is no legitimate use of the Domain Names, nor an intention to use the Domain Names in connection with a bona fide offering of goods and services.

The Complainant has never assigned, licensed, sold or transferred any rights in its MERIDIEN or LE MERIDIEN trademarks to the Respondent, and has not authorized the Respondent to register the Domain Names.

Accordingly, the Respondent does not make a legitimate non-commercial or fair use of the Domain Names. Instead, the Respondent prevents the Complainant from making use of the Domain Names for its own offers, and draws Complainant’s clients to websites, advertising for third parties and even risking infecting Complainant’s customers’ computers with adware and spyware.

Complainant’s trademarks are famous all over the world in relation to hotel and restaurant services, the Respondent cannot have ignored that the Domain Names were infringing Complainant’s rights, which means the Respondent has no legitimate interest in the Domain Names.

(iii) the Domain Names were registered and are being used in bad faith.

By using the 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 the Domain Names and websites accessible hereunder in the Internet users’ minds.

The mere fact that the Domain Names totally comprise the trademarks belonging to the Complainant, constitutes in itself bad faith registration and demonstrates that the Respondent has voluntarily tried to benefit unfairly from the reputation of the Complainant's trademarks by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Domain Names and websites accessible under the Domain Names.

The fact that the Respondent, after having received Complainant’s cease and desist letter, continued using the Domain Names, is in itself evidence of bad faith registration and use. And furthermore, the website which is used under the Domain Name <meridienint.info> amounts to unfair exploitation of the Domain Name, because the Respondent allows his registrar to collect money for every click on a link displayed on this website. This may be viewed as a direct attempt on the Complainant’s goodwill and reputation.

Moreover, the registration without authorization of a domain name that is identical to a famous trademark is in itself evidence of bad faith.

Given the reputation of the Complainant’s trademarks, it is unlikely that the Respondent chose to register the Domain Names randomly without knowledge of the existence of the trademarks of the Complainant.

It results from all of the above that the Domain Names have been registered and used in bad faith according to paragraph 3(b)(ix)(3) of the Rules.

B. Respondent

The Respondent registered the Domain Names for a special project related to its clients and has been working and spending thousands of US dollars on this project.

The Respondent has all rights related to the Domain Names. If there is a rule as the Complainant claims, that the abbreviation “int” means international and may not be used with a common word, then the registration procedures for domain names must be changed. The Complainant should have registered the Domain Names in the first place.

The Respondent’s representative sent a letter to the Complainant in an attempt to settle the matter amicably, but did not receive a reply.

The Respondent is a respected person in the digital technology community, and it considers it unacceptable that it is alleged that it acted in bad faith. The Domain Names belong to the Respondent and if the Complainant wishes to use the Domain Names, it should find a commercial solution with the Respondent and not force the Respondent by means of filing a Complaint.

6. Discussion and Findings

I. Admissibility of the additional filing

First, the Panel needs to decide if the additional filing by the Complainant on July 28, 2005, is admissible. The Rules do not provide that parties can submit supplemental filings after the submission of the Complaint and Response. According to the Rules, paragraph 12 ,the Panel may request, in its sole discretion, further statements or documents from either of the Parties in addition to the Complaint and the Response.

Although the Rules only grant the Panel the right to request supplemental filings, it does not explicitly deny the Complainant and Respondent to submit such filings. It is therefore for the Panel to decide if such submission is admissible.

Because of the nature of these panel proceedings, which require a fast decision on the basis of limited possibilities to investigate all details of the dispute, the Panel considers it undesirable that submissions are easily admissible. In this respect, the Panel agrees with the reasoning of the panel in Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner (WIPO Case No. D2001-1447), which observed that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions, but respectfully disagrees with the Panel in the aforementioned case that it is sufficient that the supplemental filings “do not address topics which the Complainant could have addressed in its Complaint”.

This should certainly be a conditio sine qua non for admissibility of unsolicited supplemental filings, but such filings can still not be admitted if they do not contain information which, at first impression, is crucial to the decision of the pending case. Obviously, in such a case, the other party must be given a reasonable term to submit a response to the supplemental filing.

In this case, the Complainant did not assert that the supplemental filing contains information that is essential for deciding this case, nor did the Panel – after a first impression of the submission – consider the information to be essential.

The submission of the supplemental filing by Complainant is therefore not admissible and shall not be taken into account.

II. The merits

According to the Policy, paragraph 4(a), the Complainant must prove each of the following circumstances:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complaint has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has worldwide trademark registrations for a device mark LE MERIDIEN, including trademark registrations in Turkey. The Panel is satisfied that these trademarks are famous and possibly well-known trademarks pursuant to Article 6bis of the Paris Convention.

The Panel that was appointed in WIPO Case No. D2005-0459 Société des Hôtels Méridien v. Mr. Richard Kaminskas, considered that the complainant did not use the trademark MERIDIEN on a wide scale, but in fact used the trademark LE MERIDIEN – and wanted to be known as such – for which reason the fame of the trademark was presumed to lie in the combination of the two words “le” and “Meridien”. Based on the record before it, the present Panel is of the opinion that the distinctive element of the trademark LE MERIDIEN is “Meridien” and that the reputation of the trademark mainly concerns the element “Meridien”. In addition, the Panel notes the Complainant asserts trademark registrations in MERIDIEN as well.

The first level identifiers .com and .info cannot play a role in establishing similarity between the Domain Names and the Complainant’s trademarks, as they are necessary elements in a domain name as known to Internet users.

The Panel agrees with the Complainant that the suffix “int” should be regarded to represent the descriptive term “international”. The overall impression of the Domain Names is not significantly changed by this suffix, especially not as Complaint operates internationally (Inter Ikea Systems B.V. v. Ikea International Co. Ltd., WIPO Case No. D2003-0965).

Given the fame of Complaint’s trademarks, and the fact that the most distinctive element of these trademarks is included in the Domain Names, there is no doubt that the Domain Names are confusingly similar to Complaint’s trademarks.

B. Rights or Legitimate Interests

The Complainant and Respondent agree that they are not affiliated or otherwise connected to each other. The Panel further understands from the Response that the Respondent acknowledges that it was not authorized to register the Domain Names, but rather believes that it was entitled to registration of the Domain Names because they were available.

The Respondent stated that it registered the Domain Names for a special project related to his clients, without giving further details. It further stated that it has rights in the Domain Names, but it did not identify the legal nature of these rights, other than referring to the status quo that it is presently registered owner of the Domain Names.

According to the Policy, paragraph 4(c), such a right or legitimate interest in the Domain Names would have been demonstrated if Respondent had shown that:

(i) before any notice to him of the dispute, its use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant.

The Respondent failed, however, to submit such evidence.

Instead the Domain Name <meridienint.com> is not used at all, and the Domain Name <meridienint.info> displays a website with commercial information, adware and spyware. This clearly does not demonstrate a right or interest in the Domain Names as required by the Rules.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Respondent defended itself against Complainant’s allegations by asserting that it is well respected, and Respondent considers the qualification “bad faith” unacceptable. The Panel reminds the Respondent that the term “bad faith” is not so much a qualification of the person of Respondent, as it is the legal term used in one of the conditions as set forth in the Rules which the Complainant must demonstrate in these proceedings.

The Complainant sufficiently demonstrated that its aforementioned trademarks are well-known, also in Turkey. It is therefore likely that the Respondent, when it registered the Domain Names, was familiar with the trademarks LE MERIDIEN, and the fact that the Complainant’s trademarks are used on an international scale.

Further, the Domain Name <meridienint.info> displays commercial information, including advertisements for third parties which are active in the economic field of the Complainant, as well as adware and spyware.

The Domain Name <meridienint.com> is inactive. However this does not necessarily preclude the Domain Name from being used in bad faith. In previous decisions panels have found that, under certain circumstances, non use of a disputed domain name may nevertheless constitute use in bad faith under the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131). In this case, the Domain Names were found to be confusingly similar to a well-known trademark, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Name, and the Respondent is using, or permitting others to use, the other Domain Name <meridienint.info> for commercial gain, which could cause harm to visitors who believe to visit a website of the Complainant.

Therefore, the Panel finds that the Domain Names were registered and used in bad faith.

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 names <meridienint.com> and <meridienint.info> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Date: August 12, 2005