WIPO Domain Name Decision: D2004-0792

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Hôtels Méridien v. ABC-Consulting

Case No. D2004-0792

1. The Parties

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

The Respondent is ABC-Consulting, Jonschwil of Switzerland.

2. The Domain Name and Registrar

The disputed domain name <leméridien.com> is registered with Key-Systems GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On October 11, 2004, Key-Systems GmbH dba domaindiscount24.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. On October 12, 2004, United Domains AG (the reseller through which the disputed domain was registered with Key –Systems Gmbh) indicated to the Center that the language of the registration agreement was German. On same date the Complainant sent a further submission to the Center. On October 12, 2004, the Center sent a complaint deficiency notification regarding the mutual jurisdiction and the language of the proceeding. In response to the notification that the complaint was administratively deficient, the Complainant filed an amendment to the complaint on October 15, 2004. With regard to the Mutual Jurisdiction, with said amendment, the Complainant agrees to submit to the Court jurisdiction at the location of the domain name holder’s address (i.e. Switzerland). As per the language of the proceeding the Complainant lodged a request for English to be the language of the proceeding, arguing that Paragraph 11 of the Rules empowers the Panel to determine it “having regard to the circumstances of the administrative procedure” and quoting several WIPO decisions rendered with regard to this issue. 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 October 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2004.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 10, 2004. 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. Preliminary Issues

A. Language of Proceedings

The Complaint was filed in the English language. On October 12, 2004, the Center sent a notification to the Complainant concerning the Language of Proceeding. Pursuant to Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by United Domain AG a reseller of the Registrar Key-System GmbH that the language of the registration agreement for the disputed domain name is German. Accordingly, the Center requested the Complainant to provide the Center either (a) an agreement with the Respondent to proceed in English or (b) a request for English to be the language of the administrative proceedings. In response to the Center’s notification, the Complainant filed on October 15, 2004, two Supplemental Arguments Regarding Language of Proceedings in accordance with the Policy. The Complainant submits that according to Rules, Paragraph 11, there is an important proviso that gives the Panel the authority “to determine otherwise, having regard to the circumstances of the administrative proceeding.” As such, the Complainant contends that it is entitled to submit legal arguments for the Panel to decide on the language of the proceedings. The Complainant proceeded to cite a number of UDRP decisions in which a Panel allowed proceedings to be conducted in a language other than the language of the registration Agreement if the circumstances showed that the Respondent was capable of responding to the Complainant’s language: Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989; The Complainant argues that, in the present case, the Respondent is also using English on its web-site and that the Respondent is perfectly capable of communicating in English.

Paragraph 11 of the Rules provides: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Thus, the general rule is that the parties are at liberty to agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding must not be prejudicial to either of the parties in their abilities to articulate the arguments for the case.

In view of the above the Panel notes the following:

1) Paragraph 1 of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that “registration agreement” means the agreement between a Registrar and a domain-name holder and “Registrar” means the entity with which the Respondent has registered a domain name that is the subject of a complaint.

2) The German company United Domains AG does not appear to be an ICANN accredited Registrar, thus Key–Systems Gmbh is the Registrar for the purpose of this administrative proceeding under the Policy.

3) Under paragraph 5 Section 12 - Final Clauses - of Key-Systems’ Registration Agreement, it is reported that “Both, the English and German version of these “terms and conditions” are valid”.

4) The web-site “www.lemèridien.com” is mainly in English.

5) It appears from the evidence submitted that the Respondent has sufficient knowledge of the English language (in particular from the email exchange between the parties).

6) Respondent was aware of Complainant’s request to conduct the procedure in English has not raised any objection.

The Panel observes that should the Respondent not have been comfortable enough with the English as the language of the procedure, it would have at least informed the Center accordingly and probably it would have requested for the German to be used in the procedure.

As it was well explained in Groupe Industriel Marcel Dassault, Dassault Aviation v. Minwoo Park WIPO Case No. D2003-0989: “the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language”.

In the above decision it was also noted that “the English used by the Respondent in his letters demonstrates his ability to understand and communicate in English without difficulty”. The Panel then concluded that English was the language of the proceeding whereas the registration agreement was in Korean.

It is the Panel’s opinion that, given the circumstances above indicated, should the procedure be in German there will be an unfair disadvantage for the Complainant while, on the contrary it does not appear that Respondent would be disadvantaged by an English proceeding. Therefore the Panel determines English to be the language of the proceeding. The Panel wishes to point out that there are many WIPO decisions rendered regarding this point of procedure, notably in Adecco S.A. v. XXXXXX (Registrant ID C953978-LRMS), WIPO Case No. D2002-0106 the panel determined that “Ordinarily, pursuant to paragraph 11 of the Rules, the language of the proceedings will be the language of the Registration Agreement. Rule 11 empowers the Panel to determine otherwise “having regard to the circumstances of the administrative proceeding.” In the view of the Panel it would be absurd to start the proceeding all over again in the Spanish language, unless the Respondent has been in any way seriously disadvantaged by having the proceeding conducted in English. The Respondent has not been disadvantaged. The Respondent has shown no unwillingness to correspond in English and the Panel has had no difficulty understanding the Respondent’s submissions. The fact that the Respondent, when registering the Domain Name, identified its registrant country as the United States suggests that insofar as the Respondent is concerned English could be at least as appropriate as Spanish for this purpose. The Panel determines that the language of this administrative proceeding should be English.”

B. Without prejudice rule

In this case the Respondent’s e-mail of October 10, 2004, produced by the Complainant in its October 12, 2004 submission, was arguably written for the purpose of settlement. This raises the issue as to whether it is subject to the common law «without prejudice rule» i.e. that it is privileged and inadmissible in evidence if and insofar as it was written for the dominant purpose of attempting to reach a settlement of the dispute. The majority of UDRP decisions on the issue have come down against the application of privilege. For a comprehensive analysis of the cases and of the varying reasons given for admitting such material, see The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453. Accordingly, this Panel declines to apply the without prejudice rule to the October 10, 2004 email.

C. Unsolicited submission

While the Rules say that the Panel may request further submissions (paragraph 12 of the Rules), they make no provision for a party to file an additional submission without leave of the Panel. The principles are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure.

The principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute. Indeed, the danger is that admitting a further document submitted by one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on.

Many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. In The Vanguard Group, Inc. v. Emilio Sa, the Panel finding was: “It has been said that if a Party wishes to submit a supplemental submission, the appropriate practice would be to first seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Appropriate reasons may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, or the desire to bring new, relevant legal authority to the attention of the Panel. See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105. Where the Complainant has not contended that it has discovered evidence not reasonably available to it at the time of its Complaint, nor does the Response appear to have raised arguments that the Complainant could not reasonably have anticipated, and there being no other exceptional circumstances that would justify admission of a Reply, Panels have stated that they do not need any further submissions. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571. This Panel repeats and agrees with the dicta by the Panel in Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427, which denied Complainant’s request to file a reply, stating: The Policy and Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. We believe this is a wise procedure given the nature of these proceedings. See also CRS Technology Corp. v. CondeNet, Inc., NAF FA0002000093547; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO D2000-0662; Electronic Commerce Media, Inc. v. Taos Mountain, NAF FA0008000095344; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com, WIPO Case No. D2000-0905 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.”

It is the Panel’s opinion that Complainant’s submission dated October 12, 2004, does not constitute an exceptional circumstance that would otherwise justify its admission into evidence. Accordingly, the Panel does not admit the proposed submission and has not regarded it in making this determination.

5. 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. Société des Hôtels Méridien is part of Le Méridien Group which is an internationally famous hotel group with a portfolio of 130 luxury and upscale hotels (34.000 rooms) in 56 countries worldwide. The majority of its properties are located in the world’s top cities and resorts throughout Europe, the Americas, Asia Pacific, Africa, the Middle East and Central Asia.

The Complainant is the owner of numerous trademarks for LE MERIDIEN registered all over the World, in over 80 countries, designating hotel and restaurant services.

The Complainant notably owns the following trademarks:

- US trademark LE MERIDIEN filed on January 21, 1987, under No. 73/640.769 and registered on December 31, 2002, under No. 2.667.456 covering various goods and services in Classes 16, 18, 21, 24, 25, 35, 39, 41 and 42, and notably “hotel, restaurant and bar services; hotel and restaurant management; booking of room services; hotel reservation services” in Class 42 (currently 43).

- Community trademark LE MERIDIEN filed on April 1, 1996, and registered on February 10, 2000, under No. 000147959 covering various goods and services in Classes 3, 8, 14, 16, 18, 19, 20, 21, 27, 28, 35, 37, 38, 39, 41 and 42, and notably “hotels, restaurants, cafeterias, bars, night clubs, rental of rooms, hotel reservations” in Class 42 (currently 43).

- International trademark registration LE MERIDIEN registered on July 26, 2000, under No. 741.561, designating various countries and notably Switzerland. Said International trademark covers various goods and services in Classes 16, 39 and 42, and notably “hotel services, motel services, hotel room bookings for travellers, provision of food and drinks; cafeterias; cocktail lounge services and services provided by brasseries; catering services” in Class 42 (currently 43).

- French trademark LE MERIDIEN registered since February 9, 2000, under No. 00/3.006.394 designating various goods and services in Classes 3, 8, 16, 18, 19, 21, 24, 25, 35, 37, 38, 39, 41 and 42, and notably “hotel services; motel services; reservation of hotel rooms for travellers; restaurant services; cafeterias; cocktail lounge services” in Class 42 (currently 43).

- Swiss trademark LE MERIDIEN registered since April 1, 1993, under No. 410.740 and duly renewed on April 1, 2003, designating various services in Classes 39 and 42, and notably “hotel services; reservation of hotel rooms for travellers; restaurant services” in Class 42 (currently 43).

The Respondent registered the domain name <leméridien.com> on April 15, 2004.

Complainant’s registered trademarks and domain names pre-date Respondent’s registration of the disputed domain name.

6. Parties’ Contentions

A. Complainant

Complainant submits that:

The mark Le MERIDIEN is extensively used all around the world and has therefore 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, 14th Chamber, Section C, Meridiana Air and Meridiana S.P.A. v. Société des Hôtels Méridien) as well as two WIPO decisions (Société des Hôtels Méridien v. United States of Moronica, WIPO Case No. D2000-0405 and Société des Hôtels Méridien v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0321) have indeed highlighted this status of the trademark Le MERIDIEN.

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

The WIPO’s panel had 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” and, in the second case, that “Complainant’s mark is very well-known throughout the World”.

The disputed domain name <leméridien.com> quasi totally reproduces the mark LE MERIDIEN in which Complainant has rights, the only differences being the adjunction of the suffix “.com” and of an accent to the first letter “e”.

Firstly, the adjunction of the suffix “.com” is of no significance and must be excluded from consideration. This suffix does not render the disputed domain name <leméridien.com> different from the Complainant’s trademark LE MERIDIEN.

This solution has been asserted by several WIPO decisions and notably in Accor v. Winston Minor, WIPO Case No. D2003-1002.

Besides, the mere adjunction within the contested domain name of an accent to the letter “e” constitutes a minor visual difference.

In this regard, it has been held in the Fortuneo v. Johann Guinebert, WIPO Case No. D2001-0781, that the disputed domain name <fortunéo.com> was confusingly similar to the Complainant’s trademark FORTUNEO.

It has also been held that “minor omissions of punctuation do not sufficiently alter the trademarketed word to negate a finding of identity of confusing similarity. This must also apply to the omission of an adjunct part of a letter, as with the French “égu” accent mark on a “e” letter “, as chérie” (Cherie Fm v. Mr. Franck Sablon-Dauberton, WIPO Case No. D2003-0486).

This minor difference is not of a nature to cast aside the likelihood of confusion between the prior trademark Le MERIDIEN and the disputed domain name.

Respondent is not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate non commercial purpose.

Prior to notice to the Respondent of this dispute, Respondent was not using the domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so. Respondent’s domain name, which was created on April 15, 2004, i.e. almost six months ago, does not point to any active web-site. Indeed the domain name <leméridien.com> only points to a general page originally displaying a mere collection of generic words with links towards other web-sites.

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

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

- The Respondent does not make a legitimate non-commercial or fair use of the domain name.

- Respondent is using the domain name to unfairly trade on Complainant’s name and mark, by associating the domain name with a list of generic words resolving some of them to online stores offering some of the same types of services Complainant sells, such hotels booking.

- The Respondent’s use of <leméridien.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 web-site is obviously merely a vehicle for generating revenue, so that it can be said that the Respondent’s activity is therefore clearly intended to obtain commercial gain and to divert Internet traffic away from Complainant’s site for its own commercial gain.

- Respondent had actual knowledge of Complainant’s trademark Le MERIDIEN when it registered the disputed domain name.

- The Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

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

- Besides, should it be considered that the generic page linked to the disputed domain name does not amount to an exploitation of the website, it should therefore be noted that passive holding does constitute bad faith.

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

- Lastly, it is also difficult to imagine that the Respondent could have had no knowledge of the Complainant’s trademark when registering the contested domain name. Indeed, it is rather unlikely that the Respondent - moreover a German speaking person - would have randomly registered the disputed domain name <leméridien.com> with an accent, i.e. the way the Complainant’s trademark and hotels are actually pronounced and spelt, and redirecting it towards a website merely displaying links notably proposing discount hotel bookings, without being aware that it refers to the famous hotel chain Le Méridien.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Thus Respondent has failed to submit any statement. It has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and shall draw such inferences from the Respondent’s default that it considers appropriate (paragraph 14(b) of the Rules).

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

1) the domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain names; and

3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name to be confusingly similar to the trademarks owned by the Complainant. As indicated by the Complainant and in accordance with many decisions rendered under the UDRP (Uniform Dispute Resolution Policy) the addition of the extension indicating the gTLD “.com” and the use of the accent on the letter “e “ are both irrelevant in determining the similarity of the domain name with a trademark and avoiding confusion. This is particularly so when the trademark at stake is a renowned one as in the present case.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the trademark “LE MERIDIEN”. Respondent does not appear to make any legitimate use of the domain name for his own commercial or non-commercial activities, in fact the domain name’s web site is not active and leads to a practically empty page displaying a collection of links to other web-sites and online stores, notably in the field of hotel industry. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

i) circumstances indicating that the holder has registered or has acquired 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

In absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainant’s trademarks, Respondent had actual knowledge of Complainant’s trademark when he registered the domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards the non-use of the domain name by Respondent, the Panel agrees with Complainant’s allegation, that in this case the “passive holding” (namely detaining the domain name without using it), infers bad faith. As established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding.

Moreover, the Panel agrees with Complainant’s view that a registration of a domain name without authorization that is identical to a famous trademark is in itself evidence of bad faith as it was held by the Panel in the PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, when stating 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”.

In this sense, the Panel notes and agrees with the explanation given in Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB WIPO Case No. DTV2000-0004, where the Panel sustained that “In these days when “cybersquatting” has become an important issue it falls naturally to assume that a purchaser of a domain name takes adequate actions in order to avoid a violation of another persons trademark rights», and also that “One must assume that a company that decides to register a domain name with the intention of making real use of the domain name in its business activities on the Internet must have checked if the domain name in question is available for registration in the gTLD’s at least. If there are competitors that use a similar domain name or if the domain name is registered in other TLD, it is reasonable to take precautions in order to avoid confusion or trademark infringement, at least if there is a bona fide intention to offer goods and services under the domain name”. This is particularly so in this case, considering that Le Meridien is a well known trademark and that Complainant owns hundreds of domain name registrations corresponding and/or containing Le Meridien trademark. It is almost impossible to register a domain name corresponding and/or containing Le Meridien trademark without noting the existence of the previous domain names registered by the Complainant.

In addition, Respondent’s failure to respond to the letters of the Complainant’s representative asking for an explanation about Respondent alleged rights on the disputed domain name, together with Respondent’s offer to sell the domain name for an amount exceeding the out of pocket expense needed to register the domain name <leméridien.com> are further inference of bad faith.

8. 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 <leméridien.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: November 23, 2004