WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club Mediterranee v. Evan Gross, Mitzvah At Sea, LLC
Case No. D2015-1298
1. The Parties
The Complainant is Club Mediterranee of Paris, France, represented by Cabinet Lavoix, France.
The Respondent is Evan Gross, Mitzvah At Sea LLC of Florida, United States of America, self- represented.
2. The Domain Names and Registrar
The disputed domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> (together the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2015. On July 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 28, 2015, the Registrar 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 July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Response was filed with the Center on August 20, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Club Mediterranee, a French company. It was founded in 1950. It runs its business under the trade name of “Club Med”. The Complainant provides holidays in the form of fully inclusive stays in vacation villages all over the world. The Complainant today operates a total of 71 resorts, two-thirds of which are top luxury resorts. The Complainant also offers holidays cruising on the “Club Med 2” ship. The Complainant aims to offer comfort levels at least equivalent to those offered by the best international hotels, as well as sports and leisure facilities, original design, fine dining, and professional child care. The Complainant operates internationally and is expanding in China in particular. The filed evidence establishes the Complainant is very successful in its area of business and very well known in that area at least.
The Complainant is the owner of numerous trademark registrations for CLUB MED. Its trademark registrations include for example: French registration CLUB MED No. 99774587 of February 11, 1999 and US registration CLUB MED No.2742867 of July 29, 2003.
The Complainant also incorporates the words “club” and “med” in the domain names and website content for its websites located at for example “www.clubmed.fr” and “www.clubmed.com”.
On January 15, 2015 the Respondent registered the Disputed Domain Names. Each of the Disputed Domain Names is used to resolve to a website which promotes a business calling itself “Destination Mitzvah” and which offers the provision of bat and bar mitzvah ceremonies at holiday destinations, including at luxury resorts or on cruise ships. The website in question describes the offered service as follows: “Destination Mitzvah is the premier, full service partner with cruise lines and family friendly all-inclusive resorts specializing in Bar and Bat Mitzvah Services and Celebrations that will always be remembered.”
A Bar Mitzvah is a coming of age ceremony for boys of the Jewish faith, carried out at 13 years of age. A Bat Mitzvah is the equivalent ceremony for a girl. They are important events in Jewish life.
5. Parties' Contentions
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Names are each confusingly similar to the CLUB MED trademark as (i) they incorporate in their entirety the Complainant’s well-known and distinctive CLUB MED trademark, and (ii) the combination thereof with generic terminology describing a ceremony is insufficient to distinguish the Disputed Domain Names from the Complainant’s trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names.
c) The Respondent uses the Disputed Domain Names in bad faith as the website to which the Disputed Domain Names resolve is designed to attract possible customers of the Complainant in the mistaken belief that they are visiting an official web site of the Complainant or of an agent of the Complainant.
The Response filed by the Respondent takes the form of a long series of short numbered paragraphs. It is convenient to set out a number of these verbatim which are sufficient to show the Respondent’s arguments:
“8. Destination Mitzvah is a full service, BBB ‘A+’ rated company, in the business of planning, managing, and implementing Bar and Bat Mitzvah ceremonies and celebrations around the world, including at resorts, hotels, cruise ships, and unique venues.
9. Destination Mitzvah’s sister company Mitzvah At Sea was created to focus on Bar and Bat Mitzvah
ceremonies and celebration on board cruise ships.
10. Destination Mitzvah was created as a unique way for a family to celebrate this important milestone with their friends and relatives over an extended period of time such as at a resort as opposed to in the traditional setting of a synagogue.
15. Club Med owns resorts worldwide that provide guests an all-inclusive vacation.
16. Club Med does not own any components needed for a Bar Mitzvah or Bat Mitzvah Service.
17. Club Med does not have Jewish clergy on its staff to teach a young adult or to officiate a Bar Mitzvah or Bat Mitzvah service.
18. Club Med does not have knowledge or experience in planning, managing, and implementing Bar Mitzvah or Bat Mitzvah ceremonies and celebrations.
19. Club Med does not offer Bar Mitzvah or Bat Mitzvah ceremonies and celebrations to its guests.
20. Destination Mitzvah compliments Club Med in that Destination Mitzvah offers a way for families to vacation at Club Med while actually having their Bar Mitzvah or Bat Mitzvah ceremony and celebration.
21. This is evidenced by the Bar Mitzvah that is being fully planned, managed, and implemented by Destination Mitzvah that will take place at Club Med, Cancun, which will generate substantial revenue for Club Med.
22. Destination Mitzvah views our relationship with Club Med as a partnership.
23. Destination Mitzvah works with individuals at Club Med in the United States and has business relationships with Club Med.
24. <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> are recently purchased domain names created to inform individuals of the ability to have a Bar Mitzvah or Bat Mitzvah ceremony and celebration at Club Med.
25. Although the phrase ‘Club Med’ does appear in the domain name, the words Bar Mitzvah and Bat Mitzvah also appear in the domain name and are clearly defined.
26. An individual who would like to go to Club Med for a family vacation would have absolutely no reason to visit the domain name <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> as there is no similarity, confusion, misleading spelling, or misleading punctuation such as hyphen to the domain names owned by Club Med.
27. The domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> are not identical to any domain name owned by Club Med.
28. The domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> direct guests to ‘www.DestinationMitzvah.com’ where additional information can be obtained about our company and the services provided, including the ability to have a Destination Mitzvah at Club Med.
33. Club Med does not have any need or use for the domains <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> as they do not offer Bar Mitzvah or Bat Mitzvah ceremonies and celebrations and nor do they own any items needed for a Bar Mitzvah Ceremony or a Bat Mitzvah Ceremony.
35. Destination Mitzvah does not have a reservation booking engine on its website and as such, it is clearly our intention to engage dialogue so that individuals and families who enter the domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> will have their Bar Mitzvah or Bat Mitzvah ceremony and celebration at a Club Med resort.
36. Destination Mitzvah does have an established business interest and a legitimate interest in the domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> .
37. It can be determined from the above that <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> have been registered and are being used in good faith.
38. The domain names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> are not for sale and are being used in good faith.”
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Names;
iii. the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the words CLUB MED.
The Panel holds that each of the Disputed Domain Names is confusingly similar to the above trademark. The Disputed Domain Names, as registered by the Respondent, incorporate the CLUB MED trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). In the present case the trademark has been combined with a generic term for a Jewish coming of age ceremony. This change does not suffice to negate the similarity between each of the Disputed Domain Names and the Complainant’s CLUB MED trademark.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here expressions such as “Bar Mitzvah” or “Bat Mitzvah”) to the Disputed Domain Names has little, if any, effect on the confusing similarity between the Domain Names and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to you of the dispute, your use of, or demonstrable 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; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making 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 or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the CLUB MED trademark. The Complainant has prior rights in the CLUB MED trademark which precede the Respondent’s registration of each of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Names. It is quite clear from the Response that the Respondent uses each of the Disputed Domain Name to suggest the possibility of Bar mitzvah or Bat mitzvah ceremonies being arranged to take place at the Complainant’s resorts but at no point has the Respondent explained how it is that it has any right which entitles it to use the Complainant’s trademark in this manner. The Panel concludes that no such right exists. The Respondent says that it has business relations with the Complainant and views its business as a “partnership” with the Complainant. Beyond a bare assertion of this supposed arrangement no evidence in support of this argument has been produced by the Respondent and the Panel declines to accept the Respondent’s case in this regard. Furthermore, the Panel notes that the Respondent is offering its services through “17 partner cruise lines” which are the Complainant’s competitors. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non exhaustive list of factors evidencing registration and use in bad faith comprises:
(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.
In the present circumstances, it is quite clear that the Respondent selected the Disputed Domain Names to deliberately suggest that the services it provides are associated with the Complainant and it seeks to attract customers by reason of such association. On the evidence before the Panel the words “club med” when juxtaposed have no meaning other than in relation to the Complainant and its business. The natural meaning of the Disputed Domain Names is to suggest that the Respondent’s business has a connection with the Complainant in the course of trade, by suggesting that it is the Complainant’s business, or is a business conducted by an authorised agent of the Complainant. It is neither. As such the Respondent’s behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “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”.
The Respondent makes much in its Response of the fact that the Complainant does not itself offer Bar mitzvah or Bat mitzvah ceremonies and hence the Respondent’s business is of benefit to the Complainant. That is not however an answer to the Complaint. First even if what the Respondent says in this respect was correct, it is for the Complainant to determine how its trademark should be used. It is not open to the Respondent to simply attach a new business to the Complainant’s existing business by using the Complainant’s trademark in a domain name, when the Complainant does not want it to do so, even if that business is in some way of benefit to the Complainant. Second and in any event it is quite clear that in the present case the Respondent’s business involves the organizing of bar mitzvah and bat mitzvah ceremonies at many resorts and destinations which are entirely unconnected with the Complainant and which take place at resorts operated by the Complainant’s competitors. It is to that extent using the Complainant’s trademark to attract potential customers who are then offered services which are nothing to do with the Complainant.
As a result the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <clubmedbarmitzvah.com> and <clubmedbatmitzvah.com> be cancelled.
Nick J. Gardner
Date: September 14, 2015