WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club Méditerranée v. Beaufort Holding Ltd.
Case No. D2000-1564
1. The Parties
The Complainant is CLUB MEDITERRANEE, 11 rue de Cambrai, 75019 Paris, France (sometimes referred to hereinafter as "Club Méditerranée").
The Respondent is Beaufort Holding Ltd. with an address at email@example.com, 2111 Wing On House 71 Des Voeux Road Central Hon, Hong Kong, HK, Central HK.
2. The Domain Name and Registrar
The domain name in dispute is <clubmediterranee.com>.
The Registrar with which the domain name is registered is CORE (Internet Council of Registrars).
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on November 13, 2000 by e-mail and in hardcopy. The Center acknowledged receipt thereof on November 16, 2000.
On November 20, 2000, the Center sent the corresponding Request for Registrar Verification in connection with this case to CORE. On November 29, 2000, the Registrar's verification response confirmed that the Registrant was Beaufort Holding Ltd. and that the domain name <clubmediterranee.com> was in "active" status.
On December 1, 2000, after having verified whether the Complaint was satisfying the formal requirements, the Center sent to the Complainant the Notification of Complaint's Deficiency pursuant to Paragraph 4 (b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Center requested the Complainant to amend its complaint in respect of the identification of the Registrar with whom the domain name at stake is registered (Para. 3 (b) (vii) of the Rules) which was incorrect, and to include a valid submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction as required by Paragraph 3 (b) (xiii) of the Rules.
On that same date, the Center received the Complaint, amended as requested.
The Center notified on December 7, 2000 by fax, courier and e-mail the Complaint and Commencement of Administrative Proceeding to the Respondent, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On December 27, 2000, the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a response within the deadline granted in this matter.
On January 19, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6 (f) of said Rules, after the latter had signed and forwarded to the Center, on January 17, 2001, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on January 19, 2001 by e-mail and registered post, hard copy of which was received by the undersigned few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
Club Méditerranée bases its complaint on exclusive worldwide rights in its trade name and "CLUB MEDITERRANEE" and "CLUB MED" trademarks and service marks.
Club Méditerranée explains that it has used the "CLUB MEDITERRANEE" mark throughout the world for the past fifty years in order to identify its well-known resort hotels, all-inclusive packaged vacations and travel related goods and services. It has also used the "CLUB MED" mark throughout the world for more than twenty-eight years to identify those same travel-related goods and services.
The Complainant owns hundreds of trademark and service mark registrations and pending applications worldwide, including at least 74 active registrations in the United States and Europe alone for marks containing the term " CLUB MEDITERRANEE ", and no less than an additional 74 active registrations in the United States and Europe alone for marks containing the name "CLUB MED" (Complainant's Exhibit D annexed to its Complaint).
Club Méditerranée also owns no less than an additional 67 active trademark and service mark registrations in Hong Kong, including no less than 25 containing the terms "CLUB MEDITERRANEE" or "CLUB MED" (Complainant's Exhibit E which is a list of those 67 active registrations in Hong Kong, including summaries of and renewal certificates for the 25 registrations covering marks containing the terms "CLUB MEDITERRANEE" or "CLUB MED").
The Complainant conducts business over the Internet through several web sites throughout the world, including at the domain name address "www.ClubMed.com" in the United States and at the domain name address "www.ClubMed.com.hk" in Hong Kong (Complainant's Exhibit F).
The Complainant has submitted factual allegations which may be reproduced as follows.
(i) In or about August 2000, Club Méditerranée learned that the domain name "clubmediterranee.com" had been registered and was being used to promote hardcore and teenage pornography (Complainant's Exhibit G).
(ii) Specifically, as of August 2000, the lead page of "clubmediterranee.com" was being used by its owner to distribute sex videos and to link to explicit pornographic content at www.Bises.com (Complainant's Exhibit H).
(iii) A search in the WHOIS database at Network Solutions, as of August 23, 2000, revealed that the domain name "clubmediterranee.com" was registered in the name of an individual named Annie Robert with an address at firstname.lastname@example.org, 2111 Wing On House 71 Des Voeux Road Central Hon, Hong Kong, HK Central HK (Complainant's Exhibit I).
(iv) On September 7, 2000, counsel for Club Méditerranée delivered a letter to Annie Robert by e-mail and overnight delivery, demanding, inter alia, that the domain name "clubmediterranee.com" be transferred to Club Méditerranée (Complainant's Exhibit J). Club Méditerranée never received a response to its demand letter.
(v) Shortly after the demand letter was sent to Annie Robert, "clubmediterranee.com" was transferred out of Ms. Robert's name and into the name of the Respondent (Complainant's Exhibit K).
(vi) Research revealed that the Respondent is the owner of at least 143 domain names in addition to ClubMediterranee.com, every one of which is used by the Respondent for the sale and promotion of pornography or the generation of revenue from third-party web sites (Complainant's Exhibit K).
(vii) The majority of the domain names owned in the Respondent's name are used to sell and promote hardcore teenage and homosexual pornography ("Pornography Ring"). The remainder of the domain names owned in the Respondent's name are used exclusively to generate revenue through the creation of Internet traffic ("Royalty Ring"); specifically, the Respondent's remaining domain names all lead to an identical web page, comprised of several links the majority of which are inactive, and the remainder lead to third-party web sites that pay royalties to the Respondent or its affiliates as consideration for the Respondent's creation of those links (Complainant's Exhibits L and M).
(viii) After counsel for Club Méditerranée delivered the demand letter to Annie Robert), and at or about the time that Ms. Robert shifted ownership of the domain name into the name of the Respondent, the content of the ClubMediterranee.com web site was modified. All pornographic content was removed from the site and, following a brief period of time during which the site was inactive, was replaced with the page of links used by the Respondent on all of its royalty ring web sites. Those links were placed underneath text that reads "Welcome to clubmediterranee" and over a background image of a body of water, reminiscent of a view one would associate with Club Méditerranée's resorts (Complainant's Exhibit N).
5. Parties’ Contentions
The Complainant mainly submits the following.
(i) The domain name <clubmediterranee.com> is identical or confusingly similar to Club Méditerranée's trade name and "CLUB MEDITERRANEE" mark; the said domain name is also identical or confusingly similar to Club Méditerranée's "CLUB MED" mark.
(ii) The Respondent has no legitimate interests in the domain name <clubmediterranee.com> for the following reasons.
Club Méditerranée has exclusive worldwide rights in and to its trade name and the marks "CLUB MEDITERRANEE" and "CLUB MED" by virtue of its decades of substantial and continuous use of those names and its more than 170 active trademark and service mark registrations covering those names in the United States, Europe and Hong Kong alone. Moreover, Club Méditerranée has never authorized the Respondent to use the name "CLUB MEDITERRANEE" as any part of a trade name, trademark, service mark or domain name.
Prior to September 7, 2000, the date that counsel for Club Méditerranée put the Respondent on notice of this dispute by virtue of a cease and desist letter, the Respondent had not used the domain name ClubMediterranee.com in connection with any offering of goods or services, much less a bona fide offering as the web site was being used only to promote hardcore pornography.
In addition, the Respondent changed the content of the web site just after Club Méditerranée's counsel had sent a demand letter demanding that the domain name be transferred to Club Méditerranée. It has not used it in connection with any offering of goods or services, much less a bona fide offering; rather, the Respondent has merely converted the web site from part of its pornography ring to part of its royalty ring.
To sum up, the Respondent has not made a fair use of the domain name, but, instead, in bad faith, for the purpose of tarnishing the mark at issue and/or misleadingly diverting consumers for profit.
(iii) The Respondent has registered and is using the "clubmediterranee.com" domain name in bad faith on the following grounds.
The Respondent registered the domain name ClubMediterranee.com with knowledge of Club Méditerranée's prior and exclusive rights in its trade name and "CLUB MEDITERRANEE" and "CLUB MED" marks. Moreover, the Respondent was expressly placed on notice of Club Méditerranée's exclusive rights in the "CLUB MEDITERRANEE" mark by virtue of the demand letter sent to Ms. Robert; notably, it was only after that date that the Respondent accepted outright ownership of the domain name at issue from Annie Robert (see e.g., Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, Apr. 20, 2000 : finding bad faith in part because the respondent had accepted ownership of the domain name from its predecessor CFR after CFR was placed on notice of the dispute; "respondent must bear the consequences of its decision to accept the disputed domain name under those circumstances").
Since acquiring the domain name ClubMediterranee.com, the Respondent has engaged in an ongoing pattern of bad faith conduct targeted against Club Méditerranée which began with the Respondent's use of the ClubMediterranee.com web site to distribute explicit sex videos and to link to hardcore pornographic content, thus giving Internet visitors the false and damaging impression that Club Méditerranée was affiliated with the Respondent's wide ring of pornographic activity (see e.g., CCA Industries, Inc. v. Dailey, WIPO Case No. D2000-0148, Apr. 26, 2000 : "association with a pornographic web site can itself constitute a bad faith").
After counsel for Club Méditerranée delivered a cease and desist letter to the Respondent, the latter modified the content of the web site to its present form, i.e. as a "royalty ring" through which it profits from the creation of Internet traffic, including by forwarding Internet users who visit ClubMediterranee.com to the web-based travel agency, E-Bookers.com, a competitor of Club Méditerranée.
The Respondent has intentionally created and is profiting from initial interest confusion that inevitably will lead Internet users looking for Club Méditerranée's web site to the Respondent's web site instead. The Respondent has taken still additional action calculated to capitalize on Club Méditerranée's name and good will, including by designing the ClubMediterranee.com web site to appear as though it originates from or is sponsored by Club Méditerranée. It has created a likelihood of confusion at that site by including text that states "Welcome to clubmediterranee" including links in French and English and by draping the site over a background image of a body of water, reminiscent of a view one would associate with Club Méditerranée's resorts.
Finally, there are also circumstances indicating that the Respondent registered or acquired the domain name for the purpose of selling it to Club Méditerranée : it was clearly no accident that the Respondent inserted the words "email@example.com" into its ownership records for the domain name ClubMediterranee.com (see, e.g., Parfums Christian Dior v. QTR Corp., WIPO Case No. D2000-023, Mar. 9, 2000 : registration and use in bad faith found where the public records on the domain name clearly indicated an offer for sale).
All of these facts and behavior constitute registration and use in bad faith under Paragraph 4 (b) (i) to (iv) of the Policy.
The Complainant concludes therefore that it is entitled to the transfer of the domain name at stake in its favor.
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are present so as to warrant relief, according to Paragraph 4 (a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15 (a) of said Rules.
A. Identity or Confusing Similarity
There is no doubt that there is identity or, at least, confusing similarity between the Complainant's trademarks "CLUB MEDITERRANEE" and the domain name <clubmediterranee.com>.
The difference in the top-level domain name is of no relevance in this regard (see, e.g., WIPO Cases Nos. D2000-489 and D2000-0490; and also Club Méditerranée v. Yosi Hasidim, WIPO Case D2000-1350, para. 6 A., p. 4).
Like in WIPO Case D2000-1350 cited above, the Sole Panelist considers here that "clubmediterranee.com" is also confusingly similar to the "CLUB MED" mark since people in the public are likely to associate it with the trademark (see also WIPO Case D2000-1427 Club Méditerranée v. Jung Hochul).
Lastly, the Complainant has established its rights in the trademarks "CLUB MEDITERRANEE" and "CLUB MED" with numerous trademark registrations for these two names not only in the United States and Europe but also in Hong Kong (see Case D2000-1350 already cited and references and WIPO Case D2000-1427).
B. Rights or Legitimate Interests of the Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. WIPO Cases Nos. D2000-0009, p. 6 or D2000-0867, p. 6; see also WIPO Case D2000-1350 cited).
It is the Sole Panelist’s finding that the Complainant has established that the trademarks "CLUB MEDITERRANEE" and "CLUB MED" have been famous in Europe and the United States for a significant period of time. The Sole Panelist is also satisfied that such marks - which are also registered in Hong Kong - must be well known there. Furthermore, as a matter of fact and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use his trademarks or to apply for any domain name incorporating the said marks.
Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
As to the unfair or bad faith use of the domain name in dispute by the Respondent alleged by the Complainant, such an issue shall be examined below under Paragraph 4 (b) of the Policy.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
As mentioned above, the Complainant has alleged that the circumstances listed above are present in the instant matter, under Paragraphs 4 (b) (i) to (iv) of the Policy.
Relying on the Complainant's submissions - made in an orderly fashion and comprehensive manner - together with supporting documents (detailed above), the Sole Panelist considers that the Complainant has established a prima facie case of bad faith of the registration and use of the <clubmediterranee.com> domain name by the Respondent, not only within the meaning the provisions of the Policy referred to above but also within the general and accepted meaning of "bad faith".
The description of the course of events of the matter and the contents of some web pages related to "clubmediterranee.com" (Complainant's Exhibits G, H and N ), as submitted by the Complainant, is illustrative of the Respondent's dubious conduct - the Respondent which has not denied any single allegation made against it -, not only in his overall dealing in domain names matters (Complainant's Exhibit K), but also in respect of the domain name at stake, which may be qualified as a typical example of "organized" cybersquatting (see WIPO Case D2000-1427 cited above and WIPO Case D2000-1428 Club Méditerranée v. Clubmedical).
In particular, the setting up of the web site <clubmediterranee.com> under the current form as "royalty ring" described by the Complainant constitutes already in itself, in the Sole Panelist's view, bad faith within the meaning of Paragraph 4 (b) (iv) of the Policy, this excluding a further need to determine whether any one of the other behaviors set forth in said Paragraph 4 are present in the instant matter.
In any case and as already stated above, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <clubmediterranee.com> shall be transferred to the Complainant.
Dated: February 1, 2001