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Société Des Hôtels Méridien v. Mr. Michael Huang [2005] GENDND 1657 (2 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Des Hôtels Méridien v. Mr. Michael Huang

Case No. D2005-0565

1. The Parties

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

The Respondent is Mr. Michael Huang, Singapore.

2. The Domain Name and Registrar

The disputed domain name <lemeridianhotels.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2005. On May 31, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 7, 2005, Moniker Online Services, LLC 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”).

On June 7, 2005, the Complainant filed additional evidence to be included in the Complaint.

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 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2005.

The Center appointed Petter Rindforth as the sole panelist in this matter on August 19, 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.

The Administrative Panel shall issue its decision based on the Complaint, the additional evidence, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant runs a luxury hotel chain called “Le MERIDIEN”. A list of international awards won by the Complainant’s Group in 2003/2004, is provided as Annex 3 of the Complaint. Le MERIDIEN was ranked as one of the top 15 luxury hotel and resort brands in the new Luxury Brand Status Index survey conducted by the New York City based Luxury Institute (Annex 3).

Le MERIDIEN Group has a portfolio of over 130 luxury and upscale Hotels (34.000 rooms) in 56 countries worldwide, among them Singapore (list of Hotels provided as Annex 4 of the Complaint).

The Complainant is the owner of numerous trademarks for Le MERIDIEN and MERIDIEN registered all over the world, in over 80 countries, notably designating hotel, restaurant and travellers’ transport services. Lists of Complainants trademark registrations, as well as copies of some Certificates of Registration provided as and in Annexes 5, 8 and 9 of the Complaint. Among others, the Complainant is the owner of the following trademark registrations:

- Singapore trademark Le MERIDIEN registered since March 1, 1991, under
No. 2377/91 covering services in International Class 39,

- Singapore trademark Le MERIDIEN registered since March 1, 1991, under
No. 2340/91 covering services in International Class 41,

- Singapore trademark Le MERIDIEN registered since March 1, 1991, under
No. 2376/91 covering services in International Class 42.

The trademarks consisting in or comprised of the terms “Le Méridien” and “Méridien” have been continuously and extensively used since at least 1972, for designating, amongst others, Hotels and hotel services (copies of press-releases, directories and catalogues provided as Annex 10 and 11 of the Complaint). In 2003, the Complainant invested £ 850 million in a programme 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, which just have opened or will open this year. Le MERIDIEN Group also invests large amounts of money in advertising campaigns. In 2003, a £ 1 million global advertising campaign was launched with massive media coverage (copy of press-release provided as Annex 12).

The Complainant and its subsidiaries and affiliates are the owners of almost 300 domain names (list provided as Annex 6). Most of these domain names point to the main official website at “www.lemeridien.com”, which provides information regarding the Hotels of Le MERIDIEN and the Le MERIDIEN Group in itself and offers the possibility for consumers to book online. The website has been voted the “Best Hotel & Lodging Industry” site in 2003, by the Web Marketing Association and it has also won a Golden Click Gold Web Award at the Hospitality Sales & Marketing Association International Adrian Awards in New York in 2004.

In March 2005, the Complainant discovered that the disputed Domain Name had been registered in favour of the Respondent. On May 12, 2005, a cease and desist letter was sent to the Respondent (Annex 8) drawing the Respondent’s attention to the Complainant’s rights in the trademarks and domain names consisting in or comprising the terms “Le Méridien” and/or “Méridien” and requesting the transfer of the domain name in dispute. 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. The Respondent did not reply.

The disputed Domain Name was registered on April 1, 2002. No specific information is provided about the Respondent’s business activities.

5. Parties’ Contentions

A. Complainant

The Complainant states that the trademarks Le MERIDIEN and MERIDIEN are indeed widely used, all around the world and that they have reached well-known and famous trademark status. Due to the significant marketing and promotional effort the Complainant has developed considerable and valuable goodwill and reputation with respect to the said marks. The Complainant refers to a number of court cases and UDRP decisions in support of the statement that Le MERIDIEN and MERIDIEN are notorious marks, such as Nanterre Court of First Instance, December 16, 2004, Société Des Hôtels Méridien v. S.A.R.L. Google France, Société Des Hôtels Méridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201 and others. Copies of these decisions provided as Annex 15 of the Complaint.

The Complainant argues that the only differences between the trademarks and the disputed Domain Name consist in the adjunction of the suffix “.com”, the substitution of an “a” for an “e” and in the addition of a generic/descriptive term which is necessary to describe services the Complainant offers to its customers, i.e. Hotels. These minor additions and alteration does not cast aside the likelihood of confusion between the prior trademarks and the disputed Domain Name.

There are far over 2 million pages dedicated to the Complainant’s Hotels indexed on Google alone. Consequently, the addition of the term Hotels, 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.

The Complainant is convinced that the present case is a typical case of “typo-squatting”, which 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”.

It is not only fairly easy for an Internet user to misspell the trademarks of the Complainant in that way, but this particular misspelling is also very common for Complainant’s trademarks and it is made worldwide (this statement demonstrated by articles from different countries, submitted as Annex 18 of the Complaint).

The Complainant further states that the Respondent has no legitimate interests or rights in the Domain Name. A search for Respondent conducted on Singapore’s Patent Office’s trademark search engine revealed no trademarks in the name of the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.

The Respondent is, according to the Complainant, not commonly known by <lemeridianhotels.com>, nor is he making a legitimate non-commercial or fair use of the Domain Name. The disputed Domain Name points to website with commercial content (domain parking), i.e. advertisement for third parties which are notably active in the economic field of the Complainant (copy of the said website provided as Annex 19 of the Complaint).

The Respondent’s use of the Domain Name diverts Internet users who intend to access the Complainant’s offering of services when they type the disputed Domain Name in their web browser. Furthermore, this causes a real prejudice to the Complainant, as the Internet users trying to book a room in one of the Le MERIDIEN Group’s Hotels, or trying to access some of the Complainant’s other services, cannot do so.

The Complainant concludes that the Respondent must have been aware of Complainant’s world famous trademarks at the time of the registration of <lemeridianhotels.com>. The Complainant also points out that the Respondent appears to have engaged in reserving “en masse” domain names corresponding to famous trademarks of third parties and appears to have already been involved in several WIPO UDRP decisions for this kind of action.

When registering the disputed domain name and through the use made thereof, the Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks (and domain names) as to the source, sponsorship, affiliation or endorsement of the contested domain name and the website accessible there-under in the Internet users’ minds. In spite of Complainant’s cease and desist letter, the Domain Name still links to the same parking website, which in itself is evidence of a bad faith registration and use Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003. In addition, the Respondent most likely receives payment for every click on a link displayed on this website, thus unjustly enriching himself to the detriment of the Complainant and also diluting Complainant’s notorious trademarks.

Since the Complainant’s rights in the Le MERIDIEN and MERIDIEN trademarks have been established for a very substantial period prior to the registration of the disputed domain name (even in Singapore, the Respondent’s country of residence), basic Searches would have revealed these rights. The Complainant refers to Société Des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 where the Panel held that “It is almost impossible to register a domain name corresponding and/or containing Le MERIDIEN trademark without noting the existence of the previous domain names registered by the Complainant”.

The Complainant has filed additional evidence, showing that the abovementioned cease and desist letter was not possible to deliver to the registered address of the Respondent. Complainant argues that this is an additional proof of Respondent’s bad faith, “since it proves that the Respondent has concealed his true identity”.

The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

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

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a number of registered trademarks for Le MERIDIEN and MERIDIEN.

Moreover, the said marks are well known worldwide and bearers of a significant goodwill and reputation.

The relevant part of the Domain Name is “lemeridianhotels”. This is obviously a misspelling of Le MERIDIEN, with addition of a generic term associated with the business of the Complainant.

It is the opinion of this Panel that the said generic addition only adds to the similarity to the trademark Le MERIDIEN, as it leaves no doubt that it refers to the hotel services connected with the mark.

As already held by the panel in Société Des Hôtels Méridien v. Modern Limited – Cayman Web Development, WIPO Case No D2004-0321, also cited by the Complainant, substitution of an “a” for an “e” is insufficient to avoid the risk of confusion between Complainant’s trademarks and the Domain Name.

Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Panel has no reason to doubt Complainant’s statement that the Respondent is not an authorized agent or licensee of the Complainant’s services and has no other permission to apply for any domain name incorporating the trademarks Le MERIDIEN or MERIDIEN.

The Respondent’s use of the Domain Name for a website listing hotel services of - as the Panel understands it - competitors of the Complainant, does not constitute any rights or legitimate interests.

Further, by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

As stated above, the Complainant’s trademarks are well known. Complainant holds trademark registrations in Singapore, the country of the Respondent, and provides hotel facilities in Singapore (as well as in many other countries).

The Panel finds it extremely hard to believe that Respondent did not know about the Complainant and their trademarks prior to the registration of the Domain Name.

The addition of the generic word “hôtels” adds to the conclusion that the Respondent was well aware of the fact that Le MERIDIEN is a trademark for hotel services.

The misspelling is, as shown by Annex 18, common for Complainant’s trademarks worldwide. The Panel finds it likely that the Respondent had knowledge about this and therefore tried to attract especially those Internet user’s seeking for the Complainants services but accidentally writing an “a” instead of an “e”. Phonetically, “meridien” and “meridian” are identical in many languages.

The Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks, and presumably earned money from pop-up advertisements and sponsored links used by those who has arrived at <lemeridianhotels.com> believing that they would find information on the Complainant’s services.

The Panel therefore finds that Respondent registered and has used the Domain Name 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 name, <lemeridianhotels.com>, be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: September 2, 2005