The Complainant is Societe des Hotels Meridien of White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Alexander Richter of Kazan, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2011. On February 4, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 5, 20011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Response was filed with the Center on March 10, 2011.
The Center appointed Ladislav Jakl as the sole panelist in this matter on March 23, 2011. 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.
On the question of the language of the proceedings, the registrar confirmed on February 5, 2011 that the language of registration agreement is English. Neither the Complainant nor the Respondent commented on this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English. 4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant in this matter is Societe des Hotels Meridien (“Complainant”), a corporation organized and existing under the laws of France and an affiliate of Starwood Hotels and Resorts Worldwide, Inc. The Complainant is the owner of all rights, title and interest in and to the LE MERIDIEN trademarks for hotel and resort services, travel services, and various related goods and services. The Complainant currently owns a portfolio of more than 100 luxury and upscale LE MERIDIEN hotels in over 50 countries worldwide, the majority of which are located in the world’s major cities and resort communities. The Complainant invests heavily in marketing and has achieved great success with its LE MERIDIEN brand. As a result of its efforts, the Complainant’s LE MERIDIEN hotels have received numerous awards, including recently being named one of the top fifteen hotel and resort brands in the world in the Luxury Brand Status Index survey conducted by the New York-based Luxury Institute.
The Complainant also owns trademark registrations for the LE MERIDIEN marks throughout the world in connection with its hotel and resort services, travel services, and various related goods and services. For example, the Complainant has been granted the following CTM trademark registrations: LE MERIDIEN, reg. No. 5821012, filing date 10/04/2007, class 36 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 6980031, filing date 11/06/2008, classes 44 and 45 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 147959, filing date 01/04/1996, classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 39, 41 and 42 of the International Classification of Goods and Services.
The Complainant also owns many domain names including the LE MERIDIEN mark, which direct consumers to its company website. These include, for example, , , , , , , , , , and .
The Complainant has branded LE MERIDIEN property in Jaipur, India, the Le Meridien Jaipur. The website for this property is located at: .
The disputed domain name was registered on October 11, 2010.
In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding, to issue a decision that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights and that the disputed domain name registered by the Respondent is essentially identical to the Complainant’s LE MERIDIEN trademarks. The Respondent has simply taken the “lemeridien” element, which the Complainant has used in a number of variations, added a second word (“jaipur”) that is a geographical term “Jaipur” and added the gTLD indicator “.com”.
The Complainant argues that courts and WIPO UDRP panels consistently have found that incorporation of a trademark in its entirety establishes that the disputed domain name is legally identical or confusingly similar to the Complainant’s trademarks. Further, the Complainant contends that it is well established that the addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service. As such, the domain name , which merely adds the geographical term “jaipur”, where the Complainant has LE MERIDIEN branded property in Jaipur, India, the Le Meridien Jaipur, cannot be taken into consideration when judging confusing similarity (Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658).
Thus, the Complainant concludes, the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not obtained the Complainant’s permission or consent to use the Complainant´s trademarks. In addition, the Respondent is not authorized to apply for or use any domain name incorporating the Complainant´s trademarks. The Respondent uses the disputed domain name to misdirect Internet users looking for the Complainant’s website to Respondent’s own infringing website, which describes the Complainant’s property in Jaipur, India and redirects users to third-party websites that are not affiliated with the Complainant and deceives users into providing their personal contact details when registering for the website. The Respondent’s use of the disputed domain name to redirect traffic through links to unrelated third-party websites cannot be considered a fair use of the infringing domain name. The use of this domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services or a non-commercial or fair use (PRL USA Holdings Inc. v. LucasCobb,WIPO Case No. D2006-0162, citing Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096).
Furthermore the Complainant argues that the Respondent is trading for commercial gain on the good name and worldwide fame and reputation of the Complainant’s business and trademarks and unfairly attracting to its own business and activities the substantial goodwill the Complainant has established over many years in its name and trademarks, without any right or legal justification for doing so (Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle,WIPO Case No. D2005-1105). The Respondent only uses the disputed domain name in connection with an online data collection scheme designed to collect the names, email addresses and other personal contact details from unsuspecting visitors to the site. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest. The Respondent appears to have used the corresponding website for “phishing”. This is a form of the Internet fraud that aims at stealing valuable information from visitors to the website and has become a serious problem for the financial industry worldwide (Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa,WIPO Case No. D2006-0614). Such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy.
The Complainant further contends that even if the website at the disputed domain name actually allowed users to book reservations at the Complainant’s property in Jaipur, India, the Complainant has not authorized nor requested to be included in the reservation services offered by Respondent (Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098; Six Contents Hotels, Inc. v. eGO,WIPO Case No. D2003-0341). When the Complainant has not requested to be included in a website’s hotel reservation services, the Complainant submits the Respondent does not have a legitimate interest in the domain name.
And finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith as the Complainant’s LE MERIDIEN marks are among the most famous trademarks in the travel and leisure industry and enjoy widespread international recognition. It is therefore inconceivable that the Respondent was unaware of LE MERIDIEN trademarks when he registered the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487). The mere fact that the Respondent registered the confusingly similar disputed domain name without authorization is evidence of its bad faith registration (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). Given the fact that the Respondent has posted a website at the disputed domain name that describes the Complainant’s property and which includes photographs of the Complainant’s Le Meridien Jaipur hotel is further evidence that the Respondent knew of the Complainant’s rights in LE MERIDIEN marks and suggests the Respondent’s opportunistic bad faith in registering the infringing domain name. The Respondent’s exploitation of the Complainant’s goodwill for financial gain by creating confusion demonstrates the Respondent’s bad faith.
Based on the foregoing, the Complainant concludes that (i) the disputed domain name is identical and/or confusingly similar to the Complainant’s LE MERIDIEN trademarks, (ii) the Respondent has no right or legitimate interest in this domain name, and (iii) the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent basically requests the Administrative Panel to deny the remedies requested by the Complainant. He presents that there was information and photos of the Jaipur hotel on the web-site translated into Russian, but that he did not intend to imitate an official web-site of the hotel and that he has deleted all the information about the hotel because Societe des Hotels Meridien do not want to see any information concerning their hotel on this web-site.
Furthermore the Respondent contends that links, which were mentioned in the Complaint, were placed not for visitors, advertisement or in bad faith. They were placed temporarily for search engine optimization experiments, for learning search engines algorithms and influence of links on them. The number of visitors of this domain name is too small, not more than the statistical variations that was generated by the spam, search and “other bots that surf the Web”. The disputed domain name was not used for advertisement or in bad faith.
Finally the Respondent argues that there was no phishing on the site. There was no need to enter any confidential information during registration process. This type of registration appears on most websites. Registration process is a standard part of the site engine used for the Respondent’s website. The registration is needed only for making comments, reviews and for preventing spam. All the fields which are used in the registration process and user's profile are standard for this site engine. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the LE MERIDIEN marks throughout the world in connection with its hotel and resort services, travel services, and various related goods and services. For example, the Complainant has been granted the following CTM trademark registrations: LE MERIDIEN, reg. No. 5821012, filing date 10/04/2007, class 36 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 6980031, filing date 11/06/2008, classes 44 and 45 of the International Classification of Goods and Services; LE MERIDIEN, reg. No. 147959, filing date 01/04/1996, classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 39, 41 and 42 of the International Classification of Goods and Services.
The Panel finds that the disputed domain name exactly reproduces the Complainant´s trademarks LE MERIDIEN. The Respondent has simply taken the “LE MERIDIEN” element, and added a second word (“jaipur”) that is a geographical term “Jaipur” and added the gTLD indicator “.com”. WIPO UDRP panels consistently have found that incorporation of a trademark in its entirety may establish that a domain name is identical or confusingly similar to a complainant’s trademark. See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717. Further, the Panel subscribes to the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812).
Addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service per se. Addition of the geographical term “jaipur”, where the Complainant has LE MERIDIEN branded property in Jaipur, India, the Le Meridien Jaipur, does not avoid the confusing similarity (Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658). Non-distinctive additions to a trademark do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310; Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658).
For all the above cited reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that none of the circumstances mentioned in Policy, paragraph 4(c), are met. The Respondent has not obtained the Complainant’s permission or consent to use the trademarks LE MERIDIEN and he is not a licensee of the Complainant nor is the Respondent otherwise authorized by the Complainant to use the LE MERIDIEN trademarks. Moreover, the Respondent is not authorized to apply for or use any domain name incorporating the Complainant´s trademarks. The Respondent uses the disputed domain name not only to misdirect Internet users looking for Complainant’s website to the Respondent’s own infringing website, which describes Complainant’s property in Jaipur, India, but it also redirects users to third-party websites that are not affiliated with the Complainant. The Respondent’s use of the domain name at issue to redirect traffic through links to unrelated third-party websites cannot be considered a fair use of the disputed domain name. The use of a domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services for a non-commercial or fair use (PRL USA Holdings Inc. v. LucasCobb,WIPO Case No. D2006-0162, citing Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096).
Therefore the Panel finds that the Respondent has no rights in the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks and company name. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
The Panel finds that the above facts demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel finds unconvincing the Respondent’s unsupported arguments to counter the Complainant’s submissions in the circumstances of this case.
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith as the Complainant’s LE MERIDIEN marks are among the most famous trademarks in the travel and leisure industry and enjoy widespread international recognition. The Panel finds it inconceivable that the Respondent was unaware of LE MERIDIEN marks when he registered the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487). Noting the renown of the Complainant’s trademark and the goodwill it has established, the mere fact that the Respondent registered the confusingly similar disputed domain name without authorization suggests bad faith (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). Given the fact that the Respondent has posted a website at the disputed domain name that describes the Complainant’s property and which includes photographs of the Complainant’s Le Meridien Jaipur hotel is further evidence that the Respondent knew of the Complainant’s rights in LE MERIDIEN marks and suggests the Respondent’s opportunistic bad faith in registering the domain name. The Respondent’s exploitation of the Complainant’s goodwill for financial gain by creating confusion demonstrates in this Panel’s view the Respondent’s bad faith.
There are circumstances present indicating that, by using the domain name , the Respondent has registered this disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Based on the look and feel of the website, the Respondent appears to wish to mislead the public by using the Complainant’s trademarks and trade name on the website. Such conduct has been found to signal bad faith in decisions such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
Beyond all doubt the Respondent has registered and used the disputed domain name in bad faith by failing to conduct an adequate search for the Complainant’s LE MERIDIEN marks prior to registration. This Panel finds that, before adopting a domain name a registrant should perform a trademark, service mark or trade name search prior to adopting a disputed domain name (America Online, Inc. v. Dot Stop,WIPO Case No. D2001-0760). Failure to conduct a trademark or service mark search prior to registration supports a finding of bad faith in the absence of a bona fide use of the disputed domain name.
As to the commercial links, displayed on the website, the Respondent´s presentation that they were placed temporarily there for search engine optimization experiments, for learning search engines algorithms and influence of links on them, do not convince this Panel. The Panel rather finds that the Respondent has by registration of the disputed domain name intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case. 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 disputed domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: April 6, 2011
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