The Complainant is Société des Hôtels Meridien, Paris, France, represented by Cabinet Degret, France.
The Respondent is Admin, Bealo Group S.A., Geneva, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <meridienneworleans.com> is registered with
OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 13, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On September 14, 2005, OnlineNic, Inc. d/b/a China-Channel.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 September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.
The Center appointed Dr. Clive N. A. Trotman as the
Sole Panelist in this matter on November 1, 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, according to the documentation it has provided, operates a world-wide chain of luxury hotels known as “Le Meridien” or “Meridien”. It is frequently the subject of favourable comments in the national and international press and media.
The chain is famous in the hotel industry, having won prestigious international awards and recently was ranked among the top 15 luxury hotel and resort brands by the Luxury Institute, New York. The Group has over 180 hotels with 34,000 rooms in 62 countries.
The Complainant owns several hotels in the United States of America and until very recently, it owned a hotel in the city of New Orleans.
The Complainant and its subsidiaries or affiliates own over 100 trademarks worldwide, and over 300 domain names, almost all incorporating the trademarks MERIDIEN or LE MERIDIEN in various forms.
The Respondent’s domain name <meridienneworleans.com> appears to
have been registered on January 5, 2005.
5. Parties’ Contentions
A. Complainant
The contentions of the Complainant include that the dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the domain name being the subject of this Complaint was registered, incorporates the Policy by reference.
The disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights.
The Complainant’s trademarks have long been famous. Trademarks containing the words MERIDIEN or LE MERIDIEN have been used by the Complainant at least since 1972. Promotion of them has been extensive including in 2003 a £1 million global advertising campaign and in 2004, a £1.47 million campaign. The Complainant has invested a large amount of money in developing its presence on the Internet with almost 300 domain names. Most point to the main official website “www.lemeridien.com”, which has won awards including “Best Hotel & Lodging Industry” site in 2003 by the Web Marketing Association, and a Golden Click Gold Web Award in 2004 at the Hospitality Sales & Marketing Association International Adrian Awards, New York.
The Complainant submits references to a number of Court cases and decisions of the WIPO UDRP panels in which the distinctiveness and notoriety of the trademarked name MERIDIEN or LE MERIDIEN has been upheld in unequivocal terms.
The Respondent’s use of the city name New Orleans is exceptionally confusing since the Complainant until recently operated a hotel there. Neither the geographical term “neworleans” nor the suffix “.com” diminish the confusing similarity of the disputed domain name to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has never assigned, licensed, sold or transferred any rights in its trademarks to the Respondent. The Complainant has undertaken extensive investigations in order to verify that the Respondent was not using the disputed domain name in connection with any bona fide offering of goods or services and that the Respondent has never been commonly known by the disputed domain name or registered it as a trademark. The Respondent has not made a legitimate non-commercial or fair use of the domain name in any way.
Numerous WIPO UDRP decisions have held that a trademark holder is not obliged to register permutations of its trademark as domain names as a precaution to prevent anyone else from doing so, which would be impossible.
The disputed domain name was registered and is being used in bad faith.
The Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s domain name in order to derive benefit. The domain name copies the construction of the Complainant’s other domain names (e.g., <meridienbarcelona.com>, <meridienchicago.com>, <meridiennewyork.com>), and the choice of New Orleans where the Complainant recently had a hotel is an aggravating factor.
The Respondent has misused the Complainant’s trademark to cause visitors to the website to be deflected to commercial websites of a disreputable or offensive nature, including those selling “penis enlargement exercises”, “human growth hormone”, “anti-aging product”, “herbs to increase sex drive” or prescription drugs such as valium; or, more recently, “homeopathic penis enlargement” and dubious “medication”. The Complainant’s goodwill is thereby damaged.
The Respondent must have been aware of the Complainant’s well-known trademarks when registering the disputed domain name, particularly since the corresponding website provides numerous false links named after the Complainant’s trademarks.
The Respondent has previously misappropriated the trademark of Radisson Hotels International, Inc., in a similar way, and has been found against in earlier domain name administrative decisions. The Complainant is prevented from registering the disputed domain name for its own legitimate purposes.
The Complainant has been unable to obtain a response from the Respondent or to verify its existence by searching appropriate databases. A Cease and Desist letter from the Complainant to the Respondent has been ignored.
The Complainant requests that the disputed domain name <meridienneworleans.com> be transferred to the Complainant.
B. Respondent
No response has been received and the Respondent has not contested the allegations
of the Complainant.
6. Discussion and Findings
Jurisdiction of Administrative Panel
Paragraph 4(a) of the Policy states:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
The disputed domain name <meridienneworleans.com> distinctly embodies
the Complainant’s well known trademark MERIDIEN, which is registered in
numerous countries. The inclusion of a geographical qualifier does not detract
from a finding of confusing similarity (Volvo Trademark Holding AB v. SC-RAD
Inc., WIPO Case No. D2003-0601; PepsiCo,
Inc. v. Kieran McGarry, WIPO Case No. D2005-0629).
The suffix “.com”, since it or an equivalent identifier is an inevitable
part of a domain name, is of no consequence for a finding of confusing similarity.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s
trademark in terms of paragraph 4(a)(i) of the Policy.
Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name
The Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant certifies that it has registered and used the trademark MERIDIEN in many countries worldwide since at least as early as 1972 and has produced evidence in the form of a detailed list running to 19 pages. The Complainant has not licensed the Respondent to use the trademark nor entered into any relationship that could give the Respondent any right to use the trademark. Thus a prima facie case is made out to the effect that the Respondent does not have any rights or legitimate interests in the domain name.
The Respondent has not refuted the Complainant’s assertions in terms of paragraph 4(c) of the Policy by attempting to establish rights or legitimate interests in respect of the domain name. The Respondent does not claim to have used the domain name or a name corresponding to it in connection with a bona fide offering of goods or services; or to have been commonly known by the domain name; or to have made a legitimate noncommercial or fair use of it. A search of trademark reference sources by the Complainant for permutations and components of the Respondent’s promotional names failed to find any association of the Respondent with the word MERIDIEN. The Panel is satisfied that the Respondent does not have a legitimate interest in the domain name and the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Of these, paragraph 4(b)(iv) provides for a finding of bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Respondent’s conduct clearly falls within the meaning and intent of paragraph 4(b)(iv) of the Policy. The reasonable inference is that the Respondent has noticed the Complainant’s convention of naming domain names in the style of the examples provided in evidence (<meridienbarcelona.com>, <meridienchicago.com>, <meridiennewyork.com>), and expects a certain number of Internet users to try <meridienneworleans.com> and be led to the Respondent’s website. Thereafter users are entrapped to select hyper-links disguised as those of the Complainant but which in reality make no connection to the Complainant and lead to sites that are offensive, sexually explicit and are arranged to generate revenue for the Respondent. The Panel finds bad faith proven in the terms of paragraph 4(b)(iv) of the Policy.
The circumstances listed in paragraphs 4(b)(i) - (iv) of the Policy are without
limitation and bad faith may be found alternatively. Registration of a well
known trademark of which the Respondent must have been aware is in itself sufficient
to amount to bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v.
The Polygenix Group Co.,WIPO Case No. D2000-0163;
Societe Des Hotels Meridien v. ABC-Consulting, WIPO
Case No. D2004-0792; Societe Des Hotels Meridien v. LaPorte Holdings,
Inc.,WIPO Case No. D2004-0849). The
Respondent’s website is based upon the misappropriation of the Complainant’s
trademark to such an extent that the Respondent cannot possibly have been unaware
of it. The Panel additionally finds bad faith proven on this count.
Bad faith can further be inferred from the Respondent’s inability or
unwillingness to be contacted (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Jafra Cosmetics,
S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector,
WIPO Case No. D2005-0250) and its failure to reply
to the Complainant’s cease and desist letter (Ebay, Inc. v. Ebay4sex.com
and Tony Caranci, WIPO Case No. D2000-1632;
Encyclopaedia Britannica, Inc. v. John Zuccarini et al., WIPO
Case No. D2000-0330).
In summary, the disputed domain name is confusingly similar to the Complainant’s
trademark in the terms of paragraph 4(a)(i) of the Policy; the Respondent has
no rights or legitimate interests in the domain name in the terms of paragraph 4(a)(ii)
of the Policy; and the Respondent has registered and is using the domain name
in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The Complainant
has proven all three elements required by paragraph 4(a) of the Policy and accordingly
the Administrative Panel decides for the Complainant.
7. Decision
The Decision of the Administrative Panel is that the disputed domain name <meridienneworleans.com> is confusingly similar to the trademark MERIDIEN or LE MERIDIEN in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <meridienneworleans.com> be transferred to the Complainant.
Dr. Clive N. A. Trotman
Sole Panelist
Dated: November 14, 2005
Stay updated! Get new cases and decisions by daily email.
