Societe des Hotels Meridien SA v. United States of Moronica
[Indexed as: Meridien v. Moronica]
[Indexed as: lemeridien.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0405
Commenced: 16 May 2000
Judgement: 27 June 2000
Presiding Panelist: Jacques A. LJger
Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Legitimate rights - Bad faith.
Complainant is registered owner of trademark LE MERIDIEN in numerous countries. Respondent registered the domain name, lemeridien.com. Complainant alleged that Respondent has no legitimate rights to the name since it is not using the name for business purposes, and that Complainant has invested substantial sums of money in developing and marketing their services under this trademark. Complainant also alleged that Respondent's name is identical to its name, and that the name was registered and used in bad faith.
Held, Name Transferred to Complainant.
For all intents and purposes, Respondent's domain name is identical to Complainant's mark. The Policy only requires the Panel to compare the domain name and trademarks or service marks in this part of the test. The likelihood of de facto confusion is irrelevant.
Respondent is not commonly known by the domain name, nor does it have a legitimate non-commercial use of the name. Respondent has not received permission from Complainant to use the trademark. Complainant's rights to the name precede Respondent's registration of the name. Respondent has not shown that it did intend to use the name with a bona fide purpose in mind. Thus, Respondent has no rights to the name.
Although MERIDIEN may be a generic term, the trademark LE MERIDIEN has acquired a distinctiveness which extends beyond its sole use as that as the indication of source for a chain of hotels. The name MERIDIEN has no relevancy to the business of Respondent. Respondent has intentionally tried to attract internet users to its site by creating confusion with Complainant's mark. The domain name is connected to Complainant and, thus, its use by another party indicates bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Panel decision referred to
Allocation Network G.m.b.H. v. Steve Gregory, Case D2000-0016.
LIBRO AG v. NA Global Link Limited, Case D2000-0186
Interep National Radio Sales, Inc. v. Technical Staffing Corporation, Case D2000-0175.
Meredith Corp. v. Cityhome, Inc., Case D2000-0223.
Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226.
Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., Case No. D2000-0163.
LJger, Panelist: -
1. The Parties
Complainant is Société des Hotels Meridien SA, 10 rue Vercingétorix, 75014 Paris, France.
Respondent is United States of Moronica/Gregory Mazzetto, 171 Pier Avenue No. 486, California, 90405-5363, U.S.A.
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is "lemeridien.com". The registrar of the Domain Name is Register.com, New York, New York.
3. Procedural History
On May 11, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated May 12, 2000, a copy of which was sent to the Respondent by e-mail and post. In a letter dated the same date the Center informed the registrar, Register.com, that a complaint had been submitted to the Center regarding the Domain Name.
On May 17, 2000 the Registrar confirmed that the Domain Name had been registered via the Registrar's registration services and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed that the Uniform Dispute Resolution Policy was applicable to the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organisation Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on May 18, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated May 18, 2000 the Center informed the Respondent of the commencement of the proceedings as of May 16, 2000 and of the rule providing for a response to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
On June 6, 2000 the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for by the Center. On June 8, 2000 the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties]. The Center also informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions have been received by the Panel from either of the Parties since its formation.
The Panel is obliged to issue a decision on or prior to June 27, 2000, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a legal person incorporated under the laws of France. The Complainant is engaged in businesses related to hotels and resorts.
The Respondent is a physical person. The Respondent develops Internet radio stations using live streaming audio.
The Complainant registered the domain name "lemeridien-hotels.com" (not at issue in the present proceedings) with planet.net.uk on November 27, 1996.
The Complainant is the registered owner of the trademark LE MERIDIEN in over 60 countries. The date of trademark registrations vary from the mid 1980s until the mid 1990s. In particular the Complainant has registered the trademark in the United States and France.
Evidence provided by the Complainant reveals that the Domain Name was registered by the Respondent with the Registrar on February 29, 2000.
Since registering the Domain Name the Respondent has been contacted by several parties inquiring into possibly purchasing the Domain Name. The Respondent originally offered the Domain Name for sale on the Great Domains web site (www.greatdomains.com) and set an asking price of US $800,000.
5. Parties' Contentions
At paragraph 12 of the Complaint the Complainant alleges that Société des Hotels Meridien SA is one of the worlds leading hotels and resorts companies with over 110 hotels and resorts throughout the world. The complainant also alleges that Le Meridien Hotels have ranked among the worlds top hotels for the last 27 years.
The Complainant continues by alleging, beginning at subparagraph 12(4) that the Complainant, its parent company and associated companies have invested substantial sums of money in developing and marketing their hotel services under the LE MERIDIEN trademark and that as a result considerable goodwill is invested in the trademark.
Additionally, the Complainant alleges, beginning at subparagraph 12(5) that the Respondent has no right or legitimate interest in respect to the Domain Name, that the Respondent is not currently using the Domain Name and that the Respondent has not obtained the name with a view to using it in connection with a business. On the contrary, the Complainant alleges at subparagraph 12(6), the Respondent has acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of his out of pocket expenses directly related to the Domain Name. This is supported, says the Complainant, by Respondent's offer to sell the Domain Name to the Complainant for U.S.$50,000 when contacted by telephone on an undisclosed date.
Finally, at subparagraph 12 (7) in fine, the Complainant alleges that the use proposed for the site was invented by the Respondent in an attempt to legitimise its actions.
The Respondent maintains that he is very active in the music industry and that during the year prior to registering the Domain Name he, amongst others,
co-hosted weekly radio shows at uclaradio.com. The Respondent maintains that his primary business activity is developing an Internet radio station for the live streaming of electronic, world and RAP music.
The Respondent continues by insisting that the Domain Name was selected as the result of a marketing selection and "consumer survey" for the purposes of providing live streaming of music of all three genres. No evidence has been advanced by the Respondent indicating the manner in which the consumer survey was conducted or how the results were analysed.
The Respondent states that during conducting the survey he placed three domain names, including the Domain Name, for auction on the Internet, with the intention of selling two of the domain names and retaining the third based on the results of the survey. When the results of the survey indicated that the Domain Name was the most appropriate for use with the live streaming of music, the Respondent maintains he raised the asking price of the Domain Name to $800,000 in order to ward anyone off from making an offer for it. The Respondent admits, however, that he did offer to sell the Domain Name to the Complainant provided he outbid others who had made offers. The Respondent also states that at this time he began to search for a replacement for the Domain Name.
The Respondent further maintains that the Trademarks registered by the Complainant have no connection with online streaming radio services so there is no risk that a consumer may be led to believe that the services to be provided by the Respondent have any connection with the Complainant's hotel chain.
The Respondent states that LE MERIDIEN is a trademark with weak distinctiveness given that it is a common French word and the Complainant is not entitled to claim a monopoly to use LE MERIDIEN exclusively of all other types of business.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
As stated above, the Complainant has provided evidence to the effect that registrations have been made for LE MERIDIEN in over 60 countries. The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark LE MERIDIEN. Given that the Domain Name is for all intents and purposes identical to the registered trademark, the Panel is of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
In this regard, the Panel also declines to deviate from the ICANN Policy, which clearly states that having a domain name which is identical to a registered trademark is sufficient to meet the test established by paragraph 4(a)(i) even if there is no likelihood of de facto confusion. Therefore, the Respondent's statement to the effect that that the trademarks registered by the Complainant have no connection with online streaming radio services and therefore there is no risk of confusion on behalf of the consumer is of no relevance.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Name nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Name. Additionally, the Panel finds that that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; the Complainant has prior rights in that trademark which precede Respondent's registration of the Domain Name; and the Respondent is not (either as an individual, business or other organization) commonly known by the name LE MERIDIEN.
The Panel is also of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(i), i.e. that the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services, but is of the opinion that the Panel's motivation in this regard warrants some discussion.
In decisions by the various panels constituted by the World Intellectual Property Organisation to resolve domain name disputes there has been some discussion of what constitutes a bona fide offering of services for the purposes of paragraph 4(c)(i). Although the Panel is well aware that the principle of stare decisis does not apply in these proceedings and that the Panel is not bound by decisions reached by earlier panels, the Panel is of the opinion that a review of some the cases provides some support for the Panel's decision.
In Allocation Network G.m.b.H. v. Steve Gregory, Case D2000-0016, the panel found that offering of a generic domain name solely for sale could in principle be considered in itself a bona fide offering of goods of services for the purposes of paragraph 4(c)(i). However, this decision should be read in conjunction with the later decision rendered in LIBRO AG v. NA Global Link Limited, Case D2000-0186, where the panel found that the mere speculative idea for a bona fide business application of a generic domain name does not fall within paragraph 4(c)(i). They go on to find that the mere speculation in generic domain names without showing any demonstrable evidence of plans for a bona fide use is not sufficient to prove legitimate interest in a domain name.
Also of interest is the decision in Interep National Radio Sales, Inc. v. Technical Staffing Corporation, Case D2000-0175, where the panel found that alleging that a particular domain name may be useful for a particular web site is insufficient for the purposes of paragraph 4(c)(i).
In his Response, the Respondent produced a number of affidavits from colleagues as well as e-mails to potential software providers in support of his intention to use the Domain Name in connection with a bona fide offering of goods and services. In the Panel's opinion the evidence provided by the Respondent is of low probative value and therefore insufficient to overcome a prima facie finding of no legitimate rights or interests in the spirit of paragraph 4(c)(i) of the ICANN Policy. The e-mails and affidavits indicate an interest on behalf of the Respondent in developing a web site providing streaming live audio over the Internet but fail to show even a small monetary or intellectual investment by the Respondent in such a venture. As a consequence, the Panel believes the proposed use of the web site does not represent a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the ICANN Policy.
Additionally, although the Panel's research has revealed that the Domain Name is currently being used as the web address for a site under construction with some general text as to the potential use of the site by the Respondent, there is no evidence to support a finding that the site was being used as such before notice of the dispute was made to the Respondent, as required by paragraph 4(c)(i) of the ICANN Policy, nor are there any statements made in this regard by the Respondent. The Panel has therefore chosen to ignore that the site is being used at the present time. In this regard the Panel did take into account the concerns voiced in the decision of Meredith Corp. v. Cityhome, Inc., Case D2000-0223, where the panel found that the non-use of the domain name for a period of eight months was not determinative of non-use.
In Trademark law, trademarks of a certain fame or notoriety have begun to receive legal protection broader than that enjoyed by conventional marks. In the United States, for example, the law concerning well known trademarks has developed to the point that in some cases the shear notoriety of a trademark may hinder the registration of the same trademark for use in conjunction with dissimilar goods or services, even in cases where the potential for confusion is unlikely or non-existent.
Whether or not a trademark can be classified as well known depends on a number of factors including: the degree of reputation acquired by the mark; the extent of duration and use, publicity and advertising; the trading area within which the mark is used; and its inherent or acquired distinctiveness.
Trademarks which possess some inherent distinctiveness are those which are invented, arbitrary or coined. Acquired distinctiveness, on the other hand, applies to trademarks which are not inherently distinctive, which may be suggestive or descriptive but have gained a certain distinctiveness through use. A trade-mark which is not inherently distinctive but which has acquired distinctiveness through use is generally a trade-mark which has benefited from broad exposure over an amount of time. Acquired distinctiveness is evidence of a trademarks strength in the market place and for that reason a wider ambit of protection is often called for.
Therefore, the Panel disagrees with the Respondent's statement that given its generic nature the trademark LE MERIDIEN is necessarily of weak distinctiveness. As a result, the Panel disagrees with the Respondent's statement to the effect that a monopoly can never be claimed for the use of a generic term.
Additionally, the Panel finds the Respondent's assertion, mentioned above, that there are many trademark registrations throughout the world using combinations including the word MERIDIEN of only small significance. In the present case, the trademark in question is LE MERIDIEN. The Panel's own research of the U.S. Federal Trademark Database reveals only the Complainant has registered the trademark LE MERIDIEN, regardless of use. The Panel's decision may have been different had the Respondent obtained a registration for the use of LE MERIDIEN for radio services.
Furthermore, the Panel conducted some research proprio motu on the Internet via a number of search engines using LEMERIDIEN as search criteria. Results of the searches were almost exclusively dedicated to members of the Le Meridien chain of hotels. While this is not conclusive, it does aid the Panel in deciding whether or not judicial notice should be taken regarding the distinctiveness of LE MERIDIEN.
It is the Panel's opinion, therefore, that although MERIDIEN may have a generic meaning, in the case at hand it has no relevancy to the business of the Respondent. It is also 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 for a chain of hotels. Additionally, in its Response the Respondent admits having searched the U.S. trademark register prior to registering the Domain Name and admits to a close connection with France where the hotel chain Le Meridien is popular and well known. Therefore, the Respondent cannot (and does not) plead lack of notice of the Complainant's trademark at the time of registering the Domain Name.
Based on the above the Panel finds that by registering and using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. Pursuant to paragraph 4(b)(iv) of the ICANN Policy such circumstances may be taken as evidence of bad faith and therefore the Panel finds that the Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the ICANN Policy. The Panel also finds that the Domain Name is obviously connected with the Complainant and therefore its products and that its use by someone with no connection with the Complainant suggests opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Case No. D2000-0163). It is of note that the Panel's decision may have been different had the Respondent registered (for example) "lemeridienradio" or similar.
On a final note, the Panel is obviously aware that if the registrant of a domain name is offered a substantial sum of money to transfer the registration then, even if the initial intention was a bona fide use of the domain name, simple economics may prove an irresistible force. The Panel is therefore of the opinion that agreeing to consider the sale of or offering for sale a registered domain name beyond out of pocket expenses does not in itself constitute bad faith for the purposes of paragraph 4(b) ICANN Policy.
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name "lemeridien.com" be transferred to the Complainant and so directs Register.com, Inc., to do so forthwith..
Domain Name Transferred