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Société des Hôtels Méridien v. EFT [2005] GENDND 50 (21 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Méridien v. EFT

Case No. D2004-0995

1. The Parties

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

The Respondent is EFT, of St Helier, Jersey, United Kingdom of Great Britain and Northern Ireland, represented by itself.

2. The Domain Names and Registrar

The disputed domain names <lemeridienjakarta.com>, <lemeridienkhaolak.com> and <lemeridienpacific.com> are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2004. On November 26, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names: <lemeridienkhaolak.com> and <lemeridienjakarta.com>. On November 26, 2004, Tucows 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. On December 3, 2004, Complainant filed a request for the addition of a Domain name, <lemeridienpacific.com>. On December 3, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to 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 December 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2004. The Response was filed with the Center on December 26, 2004. The Response proposed settlement and requested a suspension of proceedings. It did not respond substantively to the Complaint. On January 6, 2005, the Center issued a Notification of suspension. On January 10, 2005, Complainant filed a request for re-institution of the proceedings. On January 10, 2005, the Center issued a Notice to Respondent of the re-institution.

The Center appointed Kenneth A. Genoni as the sole panelist in this matter on January 14, 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, Société des Hôtels Méridien, runs a luxury hotel chain called Le Méridien which is very famous in the field of the hotel industry. It is part of the Le Méridien Group, which is an internationally famous hotel group with over 130 luxury and upscale hotels in 56 countries worldwide. The hotels are located in the world’s top cities. More particularly, they have one hotel in Khao Lak, Thailand and one in Jakarta, Indonesia.

Société des Hôtels Méridien or its subsidiaries own many trademarks and domain names comprising “Meridien” or “Le Meridien” registered worldwide. Thus, for example, the Complainant owns the U.S. Trademark LEMERIDIEN filed on January 21, 1987, for “hotel, restaurant and bar services; hotel and restaurant management; booking of room services; and hotel reservation services.”

In November 2004, the Complainant discovered that the domain name <lemeridienkhaolak.com> had been registered in favor of the Respondent, EFT, without the permission of Complainant. Later, Complainant discovered that the Respondent had registered the names <lemeridienjakarta.com> and <lemeridienpacific.com>, also without the consent of the Complainant.

5. Parties’ Contentions

A. Complainant

(1) Respondent’s Domain names are identical or confusingly similar to the Complainant’s Marks and Domain Names.

The Complainant is the owner of numerous trademarks for LEMERIDIEN registered all over the world in over 80 countries designating hotel and restaurant services. The Complainant also invests huge amounts of money in advertising. Furthermore, the Complainant has also invested a large amount of money in developing its presence over the Internet. Thus, for example, Société des Hôtels Méridien and its subsidiaries and affiliates are the owners of almost 300 domain names. More particularly, a licensee of the Complainant, Le Méridien S.A. owns the domain names <lemeridien-khaolak.com> and <lemeridien-jakarta.com> since respectively June 17, 2003, and April 17, 2000.

The disputed domain names <lemeridienjakarta.com>, <lemeridienkhaolak.com> and <lemeridienpacific.com> totally reproduce Complainant’s Mark LEMERIDIEN, the only difference being the adding of the suffix “.com” and the geographical terms, i.e., khaolak, jakarta, and pacific. The Complainant cites three WIPO decisions to support the proposition that the addition of a descriptive term or a geographic term to an identical trademark is not sufficient to avoid confusion between the domain name and the trademark. See, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Volvo Trademark Holding, A.B. v. SC-RAD, Inc., WIPO Case No. D2003-0601 and Harrods, Ltd. v. John Griffin, WIPO Case No. D2002-0641.

(2) Respondent has No Rights or Legitimate Interests in the Domain Names.

Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s Marks as a domain name.

On November 16, 2004, Complainant sent Respondent a cease and desist letter (by mail with acknowledgement of receipt and by email), drawing Respondent’s attention to Complainant’s rights in the trademarks and domain names “LE MERIDIEN,” and “MERIDIEN,” and requesting the transfer of the disputed domain names. No response was made to that letter prior to the filing of the Complaint.

The Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the domain names.

The Respondent does not make a legitimate non-commercial or fair use of the domain names. The Respondent is using the domain names to unfairly trade on Complainant’s name and mark, by associating the domain names with a list of generic words resolving some of them to online stores offering some of the same types of services Complainant sells, such as hotels’ booking. The Respondent’s use of the names diverts Internet users who intend to access Complainant’s offerings and services when they type the domain names on their web browser. This is not a legitimate use.

(3) The Domain Names were Registered and are Being Used In Bad Faith

The mark LE MERIDIEN being famous all over the world in relation to hotel and restaurant services, the Respondent could not have ignored that it was registering domain names incorporating the rights of Complainant. This is not a bona fide offering of goods and services within the meaning of Paragraph 4(c)(i) of the Policy.

The Respondent registered the domain names at issue in an attempt to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusing them with Complainant’s marks and domain names as to the source, sponsorship, affiliation or endorsement of Respondent’s website products and services by the Complainant. See Policy, para. 4(b)(iv).

B. Respondent

The Respondent has not submitted a substantive response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

C. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

A. The Complainant has rights in a trade mark, with which Respondent’s domain names are identical or confusingly similar

The mark Le MERIDIEN has been widely used all around the world and has reached well-known and famous trademark status.

In this respect, a decision of the Court of Appeal of Paris (Court of Appeal of Paris, March 6, 1992, 14^th Chamber, Section C, Meridiana Air and Meridiana S.P.A. v. Société des Hôtels Méridien) as well as three WIPO decisions (Société des Hôtels Méridien 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 and Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792) have indeed highlighted this status of the trademark Le MERIDIEN.

The Court of Appeal of Paris has asserted concerning the Complainant’s trademark Le MERIDIEN that the protection of said trademark “is furthermore extended since the trademark at hand is notorious”.

WIPO panels in the above cited cases have also asserted, in the first case, that “it is also of the Panel’s opinion that the trademark Le MERIDIEN has acquired a distinctiveness which extends beyond its sole use as that as the indication of source of a chain of hotels,” in the second case, that “Complainant’s mark is very well-known throughout the world” and, in the third case, notably that “this is particularly so when the trademark at stake is a renowned one as in the present case” and even that “given the widespread use and fame of the Complainant’s trademarks (…)”.

The disputed domain names <lemleridienkhaolak.com>, <lemeridienpacific.com> and <lemeridienjakarta.com> totally reproduce the Le MERIDIEN mark in which Complainant has rights, the only differences being the addition of the suffix “.com” and of geographical terms, i.e. khaolak and jakarta.

The addition of the suffix “.com” is of no significance and must be excluded from consideration. See Accor v. Winston Minor, WIPO Case No. D2003-1002.

According to the previous WIPO case law, the mere addition, within the contested domain names, of the geographical designations KHAOLAK / JAKARTA / PACIFIC does not cast aside the likelihood of confusion between the prior trademark Le MERIDIEN and the disputed domain names.

In Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, it has been held that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between domain name and the trademark this is especially true considering that, in the present case, the descriptive term is a geographical term (Thai for Thailand) and the trademark REDBULL is renowned worldwide.”

In Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601, it has been decided that “it has previously been held in vary many others proceedings before WIPO Panelists that a domain name created by appending a geographical term to another’s trademark or service mark does not change the domain name from being confusingly similar to the trademark”.

In Harrods Limited v. John Griffin, WIPO Case No. D2002-0641 that “the geographic designation “usa” adds nothing distinctive and the emphasis remains on the terms HARRODS to attract the attention of the Internet users.”

B. Respondent has No Rights or Legitimate Interests in the Domain Names.

Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s Marks as a domain name.

On November 16, 2004, Complainant sent Respondent a cease and desist letter (by mail with acknowledgement of receipt and by email), drawing Respondent’s attention to Complainant’s rights in the trademarks and domain names “Le Meridien,” and “Meridien,” and requesting the transfer of the disputed domain names. No response was made to that letter prior to the filing of the Complaint.

After the Complaint was filed, Respondent filed a Response which asked for a suspension of the proceedings and proposed settlement. Respondent did not allege that it had a legitimate interest in the domain names.

The Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the domain names.

The Respondent does not make a legitimate non-commercial or fair use of the domain names. The Respondent is using the domain names to unfairly trade on Complainant’s name and mark, by associating the domain names with a list of generic words resolving some of them to online stores offering some of the same types of services Complainant sells, such as hotels’ booking. The Respondent’s use of the names diverts Internet users who intend to access Complainant’s offerings and services when they type the domain names on their web browser. This is not a legitimate use.

C. The Respondent Registered and is Using the Domain Name in Bad Faith

Complainant’s rights in the Le MERIDIEN mark had been established for a very substantial period prior to the registration of the disputed domain names. Basic searches would have revealed these rights. In addition to this, the brand is globally well renowned, and even if the Respondent failed to conduct appropriate searches, it is highly unlikely that it would have been unaware of the Complainant’s pre-existing rights on registration of the domain names. That is what a Panel has decided in a very recent case - Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792 when stating that “given the widespread use and fame of the Complainant’s trademark, Respondent has actual knowledge of Complainant’s trademark when he registered the domain name (…). The Panel (…) is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain name is to be considered an inference of bad faith”.

Moreover, in the same case, the Panel decided 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 name registered by the Complainant”.

It is also difficult to imagine that the Respondent could have lacked knowledge of the Complainant’s trademark when registering the contested domain names. It is unlikely that the Respondent would have randomly registered the disputed domain names <lemeridienkhaolak.com> and <lemeridienjakarta.com> comprising geographical indications where precisely the Complainant holds hotels, and redirected them towards websites merely displaying links notably proposing discount hotel bookings, without being aware that it refers to the famous hotel chain Le Méridien.

By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.

The fact that the disputed domain names are registered on the same pattern as the ones belonging to the Complainant constitutes in itself bad faith registration and use, as it demonstrates that the Respondent has tried to benefit unfairly from the reputation of the Complainant’s trademark by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.

The Respondent’s domain names (or at least one of them) point to websites which seem to be created for the sole purpose of displaying a mere collection of advertisement banners and links to other websites and online stores, notably in the field of hotel industry.

It follows from the above that the disputed domain names have been 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, <lemeridienjakarta.com>, <lemeridienkhaolak.com>, and <lemeridienpacific.com> be transferred to the Complainant.

Kenneth A. Genoni
Sole Panelist

Dated: January 21, 2005