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Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc. [2005] GENDND 2077 (31 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc.

Case No. D2005-1196

1. The Parties

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

The Respondent is Spiral Matrix / Kentech Inc., Eldoret, Kenya.

2. The Domain Names and Registrar

The disputed domain names:

<boraboralemeridien.com>
<hotellemeridien.com>
<lemeridian-hotels.com>
<lemeridianparker.com>
<lemeridienbudapest.com>
<lemeridiengardenbeach.com>
<lemeridienmunich.com>
<lemeridien-partdieu.com>
<lemeridienpiccadilly.com>
<lemeridienpresident.com>
<lemeridienpresidentdakar.com>
<lemeridien-shelbourne.com>
<lemeridiensingapore.com>
<lemeridientahiti.com>
<leparkermeridiennewyork.com>
<leroyalmeridienkingedward.com>
<meridein.com>
<meridiendakar.com>
<meridien-thailand.com>
<parkermeridienhotel.com> are registered with Intercosmos Media Group d/b/a directNIC.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2005. On November 18, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On November 21, 2005, Intercosmos Media Group d/b/a directNIC.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 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 November 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2005.

The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on December 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.

4. Factual Background

A. Complainant

The Complainant runs one of the world’s leading luxury hotel chains. The hotels included in that hotel chain are known as LE MERIDIEN, and more simply referred to as MERIDIEN. The Complainant has submitted abundant evidence for the fact that its hotels are referred to by the international press and other media both as “Le MERIDIEN” and as “MERIDIEN”.

The Complainant, respectively its subsidiary Meridien S.A., own over 100 trademark registrations in over 80 countries for trademarks consisting of or comprising the term MERIDIEN. It owns particularly the following trademark registrations:

- French trademark MERIDIEN, registered since December 15, 1970, under No. 1.613.199 for, amongst others, hotel services;

- International trademark “le MERIDIEN”, registered since July 26, 2000, under No. 741.561, covering goods and services in classes 16, 39 and 42, in particular the services of “organizing of trips and excursions; travel and transport information; hotel services;

- Kenyan trademark “Le MERIDEIN”, registered since April 27, 1995, under No. KE/S/1995/000231, covering hotel and restaurant services, hotel reservation, in class 42;

- US trademark MERIDIEN, registered since July 7, 1986, under No. 2.694.280, covering in particular hotel services in class 42

- US trademark “Le MERIDIEN”, registered since December 2002, under No. 2.667.456, covering in particular hotel, restaurant and bar services.

There can be no doubt that the trademarks MERIDIEN and Le MERIDIEN are internationally well-known. Not only has the Complainant submitted evidence of several court judgments and a good number of WIPO decisions where the well-known character of the trademarks MERIDIEN and Le MERIDIEN has been recognized. Also the Panelist has personal knowledge of the well-known status of these trademarks.

The Complainant, respectively its subsidiaries or affiliates are also the owners of over 300 domain names comprising the term MERIDIEN, notably its main website “www.lemeridien.com”. Many of the other domain names combine the term MERIDIEN or the term Le MERIDIEN with references to the local names or places of hotels belonging to the Complainant’s hotel chain.

On October 12, 2005, the Complainant sent a cease and desist letter to the Respondent (to its e-mail and postal addresses and by facsimile), requesting the transfer of a part of the disputed domain names and the cancellation of the other part of said domain names.

The Complainant has submitted evidence for these facts.

B. Respondent

The Respondent registered on different dates during the year 2005, beginning with the first registration on April 6, 2005, the following domain names:

<boraboralemeridien.com>
<hotellemeridien.com>
<lemeridian-hotels.com>
<lemeridianparker.com>
<lemeridienbudapest.com>
<lemeridiengardenbeach.com>
<lemeridienmunich.com>
<lemeridien-partdieu.com>
<lemeridienpiccadilly.com>
<lemeridienpresident.com>
<lemeridienpresidentdakar.com>
<lemeridien-shelbourne.com>
<lemeridiensingapore.com>
<lemeridientahiti.com>
<leparkermeridiennewyork.com>
<leroyalmeridienkingedward.com>
<meridein.com>
<meridiendakar.com>
<meridien-thailand.com>
<parkermeridienhotel.com>

With respect to the majority of these domain names the Registrar has confirmed that the Registrant is Spiral Matrix, Eldoret, Kenya, with the email address billing@kenyatech.com. With respect to four domain names the contact details are different: First name: Domain, Last Name: Master; Organization: Kentech, Inc. The address is the same as before, the email address is: info@kenyatech.com. Taking into account that “www.kenyatech.com” is the main website of Kentech Inc., and that also the office phone number indicated is identical for both registrants, it can be assumed that Spiral Matrix is either identical with Kentech Inc. (this is the opinion of the Complainant, supported by further evidence, and of the Panelist in decision WIPO Case No. D2005-0890), or is at least acting on behalf of Kentech Inc. This assumption is confirmed by the fact that all domain names are linked to websites with the heading “Web Search” that on the bottom line are bearing a copyright statement of Kentech Inc. “Spiral Matrix / Kentech Inc.” will, for the purpose of this procedure, be referred to as “Respondent”.

The websites linked to the domain names provide for hypertext links to hotels of the Complainant, but also to hotels and leisure domains in general and to Competitors of the Complainant.

Furthermore, in the upper right hand corner a button is placed in big red letters stating: “buy this domain”. This button links the website to an official website of Kentech Inc, which is specializing in domain names reselling.

When clicking on one of the links to hotels of the Complainant, provided on the websites linked to the domain names, the Internet user is not directed to a website of the Complainant but to pages containing more sponsored links advertising for discount hotel room reservation services or for hotel room price comparison services.

These facts are evidenced by the Complainant with copies of the respective websites.

The Respondent did not reply to the cease and desist letter of the Complainant, but continued to register domain names, containing the trademarks of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that, with the exception of the domain names <meridein.com>, <lemeridian-hotels.com> and <lemeridianparker.com>, the domain names consist of a combination of the trademark MERIDIEN respectively the trademark Le MERIDIEN with names of hotels belonging to the Meridien Group or places where such hotels are located and that such additions relating to its business increase the likelihood of confusion with its trademarks. As far as the three misspellings of the Complainant’s trademark in the domain names <meridein.com>, <lemeridian-hotels.com> and <lemeridianparker.com> are concerned the Complainant considers those to be typical cases of typosquatting.

The Complainant therefore submits that (A) the domain names are confusingly similar to marks in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain names; (C) the domain names have been registered and are being used in bad faith.

B. Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

17 of the domain names of the Respondent consist of either the well-known trademark MERIDIEN or the well-known trademark Le MERIDIEN, combined with the word “hotel”, a geographical indication, an additional hotel name, or several of these elements, as well as the gTLD .com (the gTLD suffix cannot be taken into consideration, when judging confusing similarity). The word “hotel” is, in combination with the trademarks of the Complainant descriptive. Also, as a general rule, the combination of a distinctive or even well-known trademark with a geographical indication cannot exclude confusing similarity with the trademark. In the present case, these geographical indications are the names of places, where hotels of the Complainant are located. Consequently, the respective domain names are direct references to hotels of the Complainant. This increases the risk of confusion, as the Complainant has rightly pointed out. Finally, as far as the combination of the Complainant’s trademarks MERIDIEN or Le MERIDIEN with additional hotel names is concerned, there exists a direct reference to hotels of the Complainant since these hotel names are all names of hotels belonging to the Complainant, respectively the Le Meridien Group, of which the Complainant is a part. Therefore, these 17 domain names are confusingly similar to trademarks in which the Complainant has rights. Internet users, typing one of these domain names will expect to arrive at a website related to the respective hotel of the Complainant, but they will be lead to a “Web Search” website not related to the Complainant, containing hyperlinks to hotels of the Complainant but also to hotels of competitors and to general information sites and providing for a button offering the domain names for sale. When typing one of the links to one of the hotel of the Complainant, the users will again be diverted to sites where links to all sort of information are provided but no real information about one of the Complainant’s hotels is given.

Three domain names consist of or contain misspellings of the Complainant’s trademarks. The domain name <meridein.com> is a typical case of two letters being reversed, which also Internet users are likely to type in error. Instead of arriving at the general website of the Complainant they will again be mislead to the same “Web Search” site as in the cases dealt with before. Such cases of typo-squatting are therefore recognized not to exclude confusing similarity. The same is true for the two domain names <lemeridian-hotels.com> and <lemeridianparker.com>, where the trademark Le MERIDIEN of the Complainant is misspelled by simply substituting the vocal “a” for the vocal “e” at the end of the trademark. Again this must be considered as a case of typo-squatting which does not exclude confusing similarity with the mark of the Complainant. Also the addition of the generic term “hotels”, referring to the business of the Complainant, respectively of the word “parker”, which is one of the hotel names of the Complainant, cannot exclude confusing similarity.

The Panel arrives therefore at the conclusion that all the twenty domain names of are confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

In connection with hotel services, offered both by the Complainant and on the websites to which the Respondent links the disputed domain names, the term “MERIDIEN” is a well-known mark of the Complainant and not a descriptive term. This is even more the case for the term “Le MERIDIEN”. The Complainant has not licensed its trademarks to the Respondent nor otherwise consented to the Respondent’s use of the domain names. Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are met. According to the Complainant’s submissions, the Respondent has not used the domain names in connection with a bona fide offering of goods or services and has not demonstrated any preparations for such use. The Respondent has not challenged these submissions. As evidenced by the Complainant, the Respondent uses the domain names to divert traffic to commercial/advertisement websites that, amongst others, offer hotel reservation services in competition with the Complainant. Furthermore, these websites offer these domain names for sale. On each site a link is provided to find out how to buy the respective domain name.

The Complainant rightly points out that this is not a bona fide offering of goods or services. The Panelist is also satisfied that such use cannot be considered to be non-commercial. It would make no sense for the Respondent to provide links to websites offering services of competitors of the Complainant, if it where not to attract a fee, the more as such arrangements are common. Offering the domain names for sale is of course not a non-commercial use.

The Panel concludes in application of Rule 14(b) that the Respondent has failed to submit any circumstances to demonstrate rights to or a legitimate interest in any of the domain names as requested under 4(c) of the Policy. The Panelist is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration of 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 mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name.

A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name. The Panelist is satisfied that this test is fulfilled with respect to all domain names registered by the Respondent. All domain names are linked to a Web Search Site apparently belonging to Kentech Inc., a company that is specializing in domain names reselling (Kentech Inc. is mentioned as copyright owner on the bottom of the site), where in the upper right hand corner a button is placed in big red letters stating: “buy this domain”. This button links the website to an official website of Kentech Inc. where, as evidenced by the Complainant by copies of the respective web pages, the Internet user is asked to submit an offer for the domain name. Since the business of Kentech Inc. is to sell domain names, there cannot be any doubt that Kentech Inc. intended to sell these domain names for consideration in excess of the documented out-of-pocket costs directly related to the domain. As said before, it does not matter in that context, whether Spiral Matrix is acting on behalf of Kentech Inc or not, since it is evident that the domain names are offered for sale through the websites of Kentech Inc (either on account of Spiral Matrix or on account of Kentech Inc itself). Consequently, the Panel finds that the Respondent has offered the domain names in dispute for valuable consideration in excess of his out-of-pocket costs.

The Policy mentions in 4b(iv) as further circumstances which shall be evidence of registration and use of a domain name in bad faith that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his 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 the location or a service on that location. Also these circumstances are fulfilled in the present case with respect to all domain names in dispute.

It is obvious that the Respondent was aware of the well-known trademarks MERIDIEN and Le MERIDIEN of the Complainant, when it registered the domain names. Otherwise it would not carefully have chosen combinations of these trademarks with names of hotels belonging to the Complainant’s hotel chain and with geographical names where hotels of the Complainant are located, which still were not registered by the Complainant itself.

By using these domain names in relation with pay-per-click hypertext links for competitive hotel services the Respondent creates a likelihood of confusion between the Complainant’s marks and the disputed domain names, since Internet users, typing the domain names, will expect to arrive at a website of the Complainant. When being confronted with the “Web Search” Site of the Respondent, such users are likely to assume that there exists some kind of relationship between this site and the Complainant. This is true also for the three domain names, containing misspellings of the Complainant’s trademarks. It has been discussed in chapter 6 A that such typo-squatting cannot exclude the likelihood of confusion. That the Respondent provided these links for commercial gain is obvious. Therefore the Respondent, by using the domain names for these links to the Kentech Web Search sites, has intentionally attempted, to attract, for commercial gain, Internet users to these sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of these sites and the services offered on these sites.

In conclusion the Respondent registered the domain names in dispute in bad faith and is using them 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 following domain names be transferred to the Complainant:

<hotellemeridien.com>
<meridein.com>
<Lemeridian-hotels.com>

Furthermore, for the same reasons, and in accordance with the request of the Complainant, the Panel orders that the following domain names be cancelled:

<boraboralemeridien.com>
<lemeridianparker.com>
<lemeridienbudapest.com>
<lemeridiengardenbeach.com>
<lemeridienmunich.com>
<lemeridien-partdieu.com>
<lemeridienpiccadilly.com>
<lemeridienpresident.com>
<lemeridienpresidentdakar.com>
<lemeridien-shelbourne.com>
<lemeridiensingapore.com>
<lemeridientahiti.com>
<leparkermeridiennewyork.com>
<leroyalmeridienkingedward.com>
<meridiendakar.com>
<meridien-thailand.com>
<parkermeridienhotel.com>

Gerd F. Kunze
Sole Panelist

Dated: December 31, 2005