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Société des Hôtels Meridien v. Web It Yourself LLC [2005] GENDND 1771 (21 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Meridien v. Web It Yourself LLC

Case No. D2005-0962

1. The Parties

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

The Respondent is Web It Yourself LLC, Louisa, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <lemeridiengrandturk.com> (the “Domain Name”), is registered with GoDaddy.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on September 8, 2005, and in hardcopy on September 12, 2005. On September 9, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On the same day, the Registrar 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 and technical contact. On September 14, 2005, 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 September 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2005. The Response was filed with the Center by e-mail on October 4, 2005.

On September 16, 2005, Complainant submitted additional evidence by e-mail.

The Center appointed Dr. Bernhard F. Meyer-Hauser as the Sole Panelist in this matter on October 13, 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 Société des Hôtels Méridien and runs the well-known luxury hotel chain called “Le Méridien”.

The Complainant belongs to the Le Méridien Group which is an internationally well-known hotel Group with hotels in more than 60 countries.

The Complainant or its subsidiary company, Méridien S.A., has a number of relevant trademark registrations and applications containing the terms “Le Méridien” or “Méridien” in various jurisdictions. Complainant submitted evidence of valid trademark registration between 1975 and 2005, in countries throughout the world, including trademarks in the United Kingdom, in Turks and Caicos Islands, in the United States of America and in France. Complainant submitted evidence of almost 300 domain names comprising the terms “Le Méridien” or “Méridien”, owned by Complainant or its subsidiaries.

The Respondent is Web IT Yourself LLC. The Respondent provides services in the field of website programming. According to Respondent, it reserved the Domain Name for one of Respondent’s clients, namely a company called Seacrest Development LLC.

The Domain Name was registered on April 29, 2005. The use of the trademarks LE MERIDIEN or MERIDIEN by Respondent had not been authorized by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant objects to the use of the Domain Name by Respondent and bases its Complaint on the following grounds:

1. The Domain Name is identical or at least confusingly similar with the trademarks MERIDIEN and LE MERIDIEN owned by the Complainant. The trademarks were registered in several countries.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name:

a) Prior to notice to the Respondent of this dispute, the Respondent was not using the disputed domain name in connection with any bona fide offering of goods or services, nor had it made preparations to do so. Respondent does not make a legitimate non-commercial or fair use of the Domain Name.

b) Respondent’s client conceived the idea of registering the Domain Name after having received confidential information as to Complainant’s possible project.

c) Respondent has never been and is not commonly known by the Domain Name or any portion thereof, nor has it registered the Domain Name, or any portion thereof, as trademarks.

d) Complainant has never assigned, licensed, sold or transferred any rights in its LE MERIDIEN or MERIDIEN trademarks to Respondent, nor to Respondent’s client. Complainant has not granted Respondent or his client permission or consent to use or register as domain names Complainant’s marks or similar marks.

e) Respondent’s use of the Domain Name will confuse Internet users who intend to access Complainant’s offering of services when they type the Domain Name in their web browser.

3. The Domain Name was registered and is used in bad faith.

a) The very idea for the registration of the Domain Name stems from confidential knowledge/negotiations with Complainant.

b) Respondent has intentionally created a likelihood of confusion with Complainant’s trademarks.

c) The Domain Name was registered following the same pattern as the ones belonging to Complainant. This demonstrates that Respondent has intentionally tried to benefit unfairly from the reputation of Complainant’s trademarks.

Complainant requests the Panel to order a transfer of the Domain Name from Respondent to Complainant.

B. Respondent

Respondent submitted following responses to the statements of the Complaint:

1. The name “le meridien grand turk” is not a trade mark, nor is “lemeridiengrandturk”.

2. The Domain Name is not identical and not confusing to trademarks of Complainant, Respondent has never intended to use it in a way that would be confusing or in bad faith to Complainant.

3. Respondent did not use the Domain Name to adversely affect Complainant’s business.

4. Complainant cannot own every name prefixed by the word “lemeridien”.

Respondent requests the Panel to deny the remedies requested by Complainant.

6. Discussion and Findings

Complainant’s additional evidence submission of September 16, 2005, is not considered by the Panel.

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent engaged in an abusive domain name registration and to obtain relief. These elements are that:

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

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

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

A. Identical or Confusingly Similar

The Domain Name <lemeridiengrandturk.com> integrates the undisputed trademark LE MERIDIEN in its entirety with a description of geographical nature. The Panel agrees with Complainant’s allegation that the suffix “grandturk” does not render the disputed Domain Name significantly different from Complainant’s LE MERIDIEN and MERIDIEN trademarks.

Respondent’s argument fails that Complainant has no trademark rights to the entire word “lemeridiengrandturk”. It is not in the sense of trademark protection that an owner of a trademark must register all domain names with every conceivable prefix/suffix in order to protect the trademark (See e.g. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (October 11, 2004).

The marks LE MERIDIEN and MERIDIEN are strong and world-widely known. The Domain Name <lemeridiengrandturk.com> is most likely to be associated with Complainant’s hotel group, particularly due to the fact that Complainant already owns numerous domain names consisting of its trademark and geographical suffixes. The mere suffix “grandturk” can not avoid the confusion between the disputed Domain Name and the protected trademark. Consumers will be led to think that <lemeridiengrandturk.com> is Complainant’s domain name for Complainant’s hotel on the Islands of Grand Turk (see e.g. Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 (November 11, 2003), ACCOR v. Park Junghee, WIPO Case No. D2004-0478 (August 17, 2004).

Complainant therefore has fulfilled the requirements of para. 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights and legitimate interests of a respondent in a domain name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant represents that Respondent is not an affiliate of Complainant. This is not contested. Neither is contested that Complainant never authorised Respondent to register the LE MERIDIEN trademark or any combinations thereof.

Respondent fails to show to the Panel any legitimate use of the Domain Name for his own commercial or non-commercial activities. Respondent allegedly intended to use the Domain Name for a hotel on the Islands of Grand Turk. Another idea would have been to use the Domain Name for a dive-shop on the Islands of Grand Turk. Nevertheless, in both cases, Respondent would benefit from Complainant’s trademark LE MERIDIEN which is commonly known in the field of Complainant’s business where Respondent intends to become active.

Respondent has not previously been known under the disputed Domain Name.

Respondent has not alleged any facts or elements justifying prior rights and/or legitimate interests in the disputed Domain Name.

For the reasons set forth above, Respondent has no legitimate interest in respect of the Domain Name in the sense of paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph. 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicating that Respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

Respondent has registered a domain name reflecting an internationally well-known trademark (LE MERIDIEN). Respondent has not shown any rights to this trademark. Respondent was well aware of the trademark LE MERIDIEN as he apparently conducted negotiations with Complainant for opening a hotel on the Islands of Grand Turk. Thus, it appears that Respondent registered the Domain Name to take advantage of Complainant’s potential project on the Islands of Grand Turk. The Panel considers this to be indicative of bad faith.

To summarise, Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

In consideration of the above, the Panel holds that the Domain Name is confusingly similar to at least two registered marks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is used in bad faith.

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 <lemeridiengrandturk.com> shall be transferred to the Complainant.

Dr. Bernhard F. Meyer-Hauser
Sole Panelist

Dated: October 21, 2005