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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sociйtй des Hфtels Mйridien v. Korea Worldtravel

Case No. D2005-1215

 

1. The Parties

The Complainant is Sociйtй des Hфtels Meridien, France, Paris, represented by Cabinet Degret, France.

The Respondent is Korea Worldtravel, Joon-Gu, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <lemeridienresort.com> is registered with YesNIC Co Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center by e-mail (the ”Center”) on November 24, 2005, and in hardcopy on November 25, 2005. Following a Complaint Deficiency Notification issued by the Center on November 28, 2005, the Complainant filed further submission, which was received by e-mail on December 1, 2005, and in hardcopy on December 6, 2005. The Center verified on December 6, 2005, 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 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2006.

The Center appointed Kristiina Harenko as the sole panelist in this matter on January 11, 2006. 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 the holder of the following trademark registrations:

- Korean trademark LE MERIDIEN registered since November 9, 1994, under No. 25358 and duly renewed on November 9, 2004, and designating “hotel, restaurant and cafereria services” in International Class 43

- Chinese trademark LE MERIDIEN registered since January 14, 2005, under No. 3.504.214 and covering various services in International Class 43, in particular “hotel and motel services”,

- Community trademark LE MERIDIEN registered since February 10, 2000, under No. 147.959, to notably cover the services of “communications; travel agencies; arranging of tours; hotels” in International Classes 38, 39 and 42,

- French trademark MERIDIEN registered since December 15, 1970 and duly renewed under No. 1.613.199, which notably designates “hotel services” in International Class 42.

Copies of the corresponding registration / renewal certificates were attached to the Complaint.

The Respondent registered its domain name <lemeridienresort.com> on July 26, 2002. At that time, the Complainant had registered the above-mentioned trademarks LE MERIDIEN and MERIDIEN.

 

5. Parties’ Contentions

A. Complainant

The Complainant is part of the LE MERIDIEN Group which is internationally famous hotel and resort Group with a portfolio of over 130 luxury and upscale hotels and/or resorts (34.000 rooms) in 62 countries worldwide. The Complainant or its subsidiary company, Meridien S.A., are the respective owners of many trademarks and domain names consisting in or comprising the terms “le meridien” or “meridien”. The Complainant has attached a list of registered trademarks and domain names to its Complaint.

In August 2005, the Complainant discovered that the domain name <lemeridienresort.com> had been registered in favor of the Respondent, although the registration and the corresponding use of the trademarks LE MERIDIEN and MERIDIEN by the Respondent had not been authorized in any way by the Complainant or any of its subsidiaries, companies, affiliates or representatives.

On September 8, 2005, a cease and desist letter was sent (by registered mail with acknowledgement of receipt and by email) to the Respondent on behalf of the Complainant and Meridien S.A. by their worldwide attorneys, Cabinet Degret from Paris, drawing the Respondent’s attention to the Complainant’s rights in the trademarks and domain names consisting in or comprising the terms “le meridien” and/or “meridien” and requesting the transfer of the disputed domain name. The Complainant also offered to reimburse to the Respondent the costs directly associated with acquiring the domain name <lemeridienresort.com>. The cease and desist letter with its annexes was attached to the Complaint.

The Respondent did not reply to said cease and desist letter, even though the e-mail version of the letter apparently reached the Respondent.

a) Identity or Confusing Similarity

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 travelers’ transport services, as per enclosed copy of the Complainant’s worldwide trademarks portfolio.

Due to a significant marketing and promotional effort the Complainant has developed considerable and valuable goodwill and reputation with respect to the Le MERIDIEN and MERIDIEN marks.

Furthermore, the Complainant has also invested a large amount of money in developing its presence on the Internet. Indeed, the Complainant and its subsidiaries and affiliates are the owners of almost 300 domain names the list of which was attached to the Complaint. Most of these domain names point to the main official website “lemeridien.com”. A print-out of the first page of this main official website “lemeridien.com” was attached to the Complaint.

The disputed domain name <lemeridienresort.com> totally reproduces the Complainant’s Le MERIDIEN as well as MERIDIEN trademarks and domain names.

The only differences between these trademarks and the contested domain name consist in the adjunction of the suffix “.com” and of a generic/descriptive term which is necessary to describe the Complainant’s activity, services and offers to its customers, i.e. resort.

Firstly, the adjunction of the suffix “.com” is of no significance and must not be taken into account for the purpose of the present comparison, since the use of a gTLD only obeys to a technical necessity and is furthermore required of domain name registrants (Accor v. Winston Minor, WIPO Case No. D2003-1002).

Thus, this suffix does not render the disputed domain name lemeridienresort.com different from the Complainant’s LE MERIDIEN and MERIDIEN trademarks.

Secondly, the incorporation of the prior LE MERIDIEN and MERIDIEN trademarks in their entirety within the challenged domain names is sufficient to establish that these domain names are identical or, at least, confusingly similar to the Complainant’s marks (Quixtar Investments Inc. v. Dennis Hoffman. WIPO Case No. D2000-0253. Osoft Consulting Limited v. Bernard Lynch D/B/AJ Rainbow Globe. WIPO Case No. D2004-0668).

Thirdly, according to WIPO case law, the mere adjunction, within the contested domain names, of terms which are generic/descriptive does not cast aside the likelihood of confusion between the prior trademarks and the disputed domain name.

Indeed, the adjunction of the term “resort” to the trademark of a hotel company in order to form a domain name was held to enhance the risk of confusion. This was decided in the WIPO Case No D2004-0478 regarding the domain name <sofitelresort.com>.

Moreover, the Complainant is particularly famous for its award winning resorts. Also, since the Complainant’s hotels and resorts are among the world’s most favored destinations for vacationers, simply typing “le meridien resort” into any search engine would have revealed Complainant’s existence.

It results from the above that the disputed domain name <lemeridienresort.com> is identical, or at least confusingly similar to the LE MERIDIEN and MERIDIEN trademarks in which the Complainant has rights, according to the Rules para. 3(b)(ix)(l).

b) Rights or Legitimate Interests

Prior to notice to the Respondent of this dispute, Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so.

Firstly, it should be noted that the disputed domain name<lemeridienresort.com>, even though it was registered several month ago, does not point toward an active website.

Given that the domain name lemeridienresort.com is not linked to any website, there is obviously neither a legitimate use of this domain name nor a use in connection with a bona fide offering of goods and services.

The Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the domain name lemeridienresort.com or any portion thereof, nor has it registered the domain name, or any portions thereof, as a trademark.

On the contrary, the Complainant is widely known by the public all over the world.

Therefore, since the Respondent listed its name as being Koreaworldtravel in the WHOIS domain name registration information, the Respondent is not commonly known by the domain name lemeridienresort.com.

Moreover, the Respondent’s contact email as listed on the relevant WHOIS extracts is webmaster@baliresort.co.kr. When one goes to “http://www.baliresort.co.kr” which Complainant presumes to be the homepage of the Respondent, it appears that the Respondent is engaged in the travel industry, i.e. Respondent is a travel agency (a printout of the first page and several other pages of the Respondent’s website were attached to the Complaint).

However, on the said website Complainant’s attorneys were not able to locate any offer concerning the Complainant’s resorts; only Complainant’s most fierce competitors’ services seem to be offered there.

The Complainant has never assigned, licensed, sold or transferred any rights in its Le MERIDIEN or MERIDIEN trademarks to the Respondent. The Complainant has not granted the Respondent permission or consent to use or register its marks or similar marks as domain names.

The Respondent does not make a legitimate non-commercial or fair use of the domain name which would give it an interest therein.

Instead, the Respondent prevents the Complainant from making use of said domain name for its own offers. This is still the case, even months after the Complainant’s cease and desist letter.

The Respondent’s use of <lemeridienresort.com> diverts Internet users who intend to access the Complainant’s offering of services when they type the domain name on their web browser. This is not a legitimate use.

Finally, the marks LE MERIDIEN and MERIDIEN being famous all over the world in relation to hotels, resorts and restaurants (as held by WIPO and Courts and as demonstrated earlier), the Respondent cannot have ignored that it was registering a domain name which infringes on the rights of the Complainant (in particular since the Respondent is itself a member of the travel industry!), so that the Respondent cannot have any legitimate interest in the domain name <lemeridienresort.com> according to Rules, para. 3(b)(ix)(2)

c) Registration and Use in Bad Faith

Firstly, the Respondent registered the domain name <lemeridienresort.com> for the primary purpose of disrupting the Complainant’s business, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the contested domain name.

Since the Respondent is itself active in the travel industry, it is very unlikely that the Respondent registered the disputed domain name <lemeridienresort.com> randomly.

The trademarks Le MERIDIEN and MERIDIEN being famous all over the world in relation to resorts, hotels and restaurants, the Respondent could not ignored that it was registering a domain name incorporating the rights of the Complainant.

Secondly, the Complainant’s rights in the LE MERIDIEN mark had been established for a very substantial period prior to the registration of the disputed domain name and basic searches would have revealed these rights. In addition to this, the brand is globally well renowned, as discussed above 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 name, in particular given the Respondent’s activities as travel agency.

Thirdly, the registration without authorization of a domain name that is identical to a famous trademark is in itself evidence of bad faith.

This is what has been held by the Panel in the PepsiCo. Inc. v. Paul J. Swider, WIPO Case No. D 2002-0561, which stated that “the Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous PEPSI mark and PEPSICO trade name is in and of itself evidence of bad faith”.

Fourthly, the Complainant was unable to locate any offers for its resorts and/or hotels on the Respondent’s website. Thus, it appears that the Respondent, should it decide to use the contested domain name, can only use it in a manner that would be detrimental to the Complainant. Indeed, the Respondent carries only offers from such competitors of the Complainant as Hilton.

Therefore, any good faith use of the contested domain name by the Respondent is actually inconceivable and that is also an element that indicates the Respondent’s bad faith.

Finally, it should be considered that the current website linked to the disputed domain name does not amount to an exploitation of said <lemeridienresort.com> and, should the domain name in dispute remain unexploited (as it is the case at the moment), the Complainant, which has legitimate rights to this name, is prevented from using it, thus suffering a direct commercial prejudice, as well as a loss of goodwill, reputation and dilution of its trademarks and trade-name. In this regard, it should therefore be noted that “passive holding” does constitute bad faith.

Furthermore, the Respondent did not reply to the Complainant’s offer for an amicable solution of the dispute having failed to respond to the cease and desist letter requesting the transfer of <lemeridienresort.com>. Thus either the Respondent did not receive the cease and desist letter because it communicated false information about its identity, or it did not want to answer.

It results from the above that the disputed domain name <lemeridienresort.com> has been registered and used in bad faith according to Rule para. 3(b)(ix)(3)

For all of these reasons, the Complainant requests that the domain name <lemeridienresort.com> be transferred to the Complainant.

B. Respondent

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

 

6. Discussion and Findings

Pursuant to Policy, Complainant must prove the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which it holds rights; and

(ii) Respondent has no right or legitimate interests in the domain name; and

(iii) The domain name was registered and used in bad faith.

A. Identical or Confusingly Similar

The dominant part of the domain name <lemeridienresort.com> comprises the words “le meridien”, which are identical to the registered trademarks LE MERIDIEN and MERIDIEN. The addition of the suffix “.com” is of no significance since the use of gTLD only obeys to a technical necessity. The mere adjunction, within the contested domain names, of terms which are generic/descriptive does not cast aside the likelihood of confusion between the prior trademarks and the disputed domain name. The addition of the word “resort” to Complainant’s trademarks Le MERIDIEN and MERIDIEN 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 Panel finds that the domain name <lemeridienresort.com> is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The trademarks LE MERIDIEN and MERIDIEN are well known throughout the world and widely associated with the Complainant. Nothing in the record suggests that the Respondent is also known as “Le Meridien” or “Meridien”, or that it is in any way connected to the Complainant’s business.

The Respondent does not have any license, authorization or permission to use the LE MERIDIEN or MERIDIEN trademarks, nor is it a representative of the Complainant.

The Respondent has not replied to the Complainant’s contentions and therefore has failed to invoke any right or legitimate interest it might have in respect of the disputed domain name. The arguments by the Complainant, as summarized here above under 5A(b), supported by means of proof submitted by the Complainant, have convinced the Panel that the Respondent has not had, nor has, any rights or legitimate interest in respect of the domain name <lemeridienresort.com>.

C. Registered and Used in Bad Faith

In the absence of contrary evidence the Panel is convinced that the Respondent has registered the domain name <lemeridien.com> for the primary purpose of disrupting the Complainant’s business, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the contested domain name. The mere fact that the disputed domain name is registered on the same pattern as the ones belonging to the Complainant (LE MERIDIEN with a generic word “resort”) strongly suggests that the Respondent has tried to benefit unfairly from the reputation of the Complainant’s trademark. Since the Respondent is itself active in the travel industry, it is very unlikely that the Respondent registered the disputed domain name <lemeridienresort.com> randomly. The trademark LE MERIDIEN is such a well-known and famous marks and so obviously connected with the Complainant and its activities that its very use in unconnected business, as in the present case, must be considered what has been called “opportunistic bad faith”.

According to the documentation provided by the Complainant the current website linked to the disputed domain name does not amount to an exploitation of said <lemeridienresort.com> and, should the domain name in dispute remain unexploited, the Complainant, which has legitimate rights to this name, is prevented from using it, thus suffering a direct commercial prejudice, as well as a loss of goodwill, reputation an dilution of its trademarks and trade-name. The Panel finds in accordance with former UDRP decisions that this kind of “passive holding” can constitute bad faith registration and use.

Furthermore, the absence of a response by the Respondent to solicitations by the Complainant or possible concealment of identity constitutes evidence of bad faith. Respondent necessarily acted in bad faith on either of the above-mentioned grounds.

The Panel finds that the Complainant has proved that the Respondent has registered and used the domain name <lemeridienresort.com> in bad faith. The Respondent has not responded to the Complaint and has thus not demonstrated any rights and legitimate interests in the domain name <lemeridienresort.com>.

 

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, <lemeridienresort.com> be transferred to the Complainant.


Kristiina Harenko
Sole Panelist

Dated: January 25, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1215.html

 

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