Complainant is Club Mediterranee of Paris, France, represented by Cabinet Lavoix, France.
Respondent is Patricio Muñoz (Munoz) of Pucon, Chile, represented by Estudiojuridico.cl, Chile.
The disputed domain name <clubmedixtapamexico.com> is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Response was filed with the Center on March 15, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 31, 2016. 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.
Complainant is a French company founded in 1950, which has a world-wide reputation and runs its all-inclusive vacation resort business under the trade name Club Med. Complainant currently operates 71 Club Med vacation resorts throughout the world.
Complainant is the owner of numerous prior trademarks comprising the trade name CLUB MED registered worldwide. Complainant’s earliest registration for CLUB MED dates back to July 9, 1981 in Australia (Reg. Nos. 362596 and 362598). On April 13, 2000, Complainant was issued an international registration of the CLUB MED trademark (Reg. No. 740283). The Mexican registration (Reg. No. 129849) for CLUB MED was issued on June 13, 2012, and is set to expire August 12, 2021.
Complainant currently owns the following domain names which utilize the CLUB MED trademark:
<clubmed.fr>; <clubmed.eu>; <clubmed.com>; <clubmed.com.mx>; <clubmed.us>; <clubmed.ca>; <clubmed.it>; <clubmed.hk>; <clubmed.sg>; <clubmed.com.tw>; <clubmed.co.in>; <clubmed.co.jp>; <clubmed.co.uk>; and <clubmed.com.cn>.
Complainant currently maintains the active website “www.clubmed.com.mx” in connection with several resorts it owns and operates in Mexico, including a resort in Ixtapa. Complainant has been operating its Club Med business in Mexico for over 40 years.
The disputed domain name was registered on August 28, 2014 and expires on August 28, 2016.
Complainant alleges that its CLUB MED trademark is well-known inter alia based on its resorts in Mexico. Complainant asserts that the disputed domain name is confusingly similar to its CLUB MED mark because “Club Med” appears at the beginning of the disputed domain name, followed by the location of one of its resorts, i.e., Ixtapa, Mexico. Complainant argues that the “.com” extension is irrelevant in determining confusing similarity.
Complainant states that the disputed domain name corresponds to Respondent’s website containing photographs of the genuine Club Med resort in Ixtapa, Mexico, and offers reservations to the genuine Club Med Ixtapa Pacific resort. Complainant reports that information appearing on “www.ciudadnet.cl”, which is another website maintained by Respondent, indicates that Respondent’s business specializes in creating websites for hotels. Complainant suggests that because of the nature of Respondent’s business, it must be aware of Complainant’s resort in Ixtapa. Complainant argues that because the website associated with the disputed domain name refers to and offers the services of the genuine Club Med resort owned and operated by Complainant, the public will be misled to believe that an affiliation exists between Respondent and Complainant.
Complainant contends that Respondent is not a licensee of Complainant, and has neither received any authorization from Complainant to use its CLUB MED trademark in any domain name, nor any authorization to sell the services of the Club Med Ixtapa resort. Complainant further argues that because online searches of the Mexican and WIPO trademark databases by Complainant reveal no trademark registrations or applications by Respondent or in the name of Respondent, Respondent has no right to register a domain name containing Complainant’s CLUB MED trademark without its consent.
Finally, Complainant alleges that Respondent has registered and used the disputed domain name in bad faith because Complainant has, over several decades, used the CLUB MED trademark in Mexico to build a reputation regarding its hotel and tourism services, such that it would be implausible that Respondent would not be aware of Complainant’s Club Med business in Mexico prior to the registration of the disputed domain name. Complainant further asserts that the photographs of Complainant’s Club Med resort in Ixtapa appearing on Respondent’s website hosted at the disputed domain name prove that Respondent had prior knowledge of Complainant’s CLUB MED trademark and business in Mexico, and the trademark rights associated therewith.
As further evidence of Respondent’s bad faith use of the disputed domain name, Complainant suggests that Respondent intended to confuse and deceive Complainant’s potential customers by using a domain name and creating a website that had the appearance of an official website of Complainant for the purpose of directing Internet users to Respondent’s own website for commercial gain.
Respondent states that it has, in good faith, registered and used the disputed domain name, which is in no way concerned with, and cannot be confused with, any trademark rights to which Complainant is entitled.
Respondent states that previous panels have analyzed cases involving disputes regarding trademark rights, usage, infringement, unfair competition, deceptive trade practices, etc. and have concluded that such disputes extend beyond the panel’s limited jurisdiction under the Policy. Respondent argues that a panel may only consider the question of whether Respondent has engaged in “cybersquatting,” which Respondent, quoting Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case D2005-1201, defines as registering a domain name that consists of, or includes marks that are confusingly similar to marks belonging to another in order to profit from the “goodwill” associated therewith.
Respondent denies having registered and used the disputed domain name with the intention of diverting consumers “the wrong way, or to profit from the brand name product or service” of Complainant. Respondent contends that some panels have recognized a party’s right to nominative fair use of another party’s mark in its domain name based on a legitimate interest in describing its business.
Respondent argues that because Complainant has failed to produce any evidence supporting a commercial use of the disputed domain name by Respondent, the Panel cannot conclude that Respondent acted in bad faith. Respondent states that it did not register the disputed domain name with the intention of selling, renting or loaning it to Complainant or any other party, nor in order to attract users, nor to generate profit. Respondent denies that it is a competitor of Complainant and states that it did not register the disputed domain name in order to prevent Complainant from reflecting the CLUB MED mark in a corresponding domain name, nor to disrupt Complainant’s business, but rather to criticize Complainant. As further evidence that it has not acted in bad faith, Respondent states that the disputed domain name is in use and that it took no steps to hide its identity or prevent communication with Complainant.
The Panel finds that Complainant has rights in the CLUB MED trademark in view of its numerous trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the CLUB MED mark because it incorporates the entirety of the trademark. The addition of the descriptive terms “Ixtapa” and “Mexico” does not ameliorate the entire reproduction of the CLUB MED mark, and indeed may enhance the likelihood of confusion because Complainant operates one of its Club Med resorts in Ixtapa, Mexico.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
The evidence of record supports Complainant’s allegations that it has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the CLUB MED trademark. Complainant has prior rights in the CLUB MED trademark which precede Respondent’s registration of the disputed domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, thereby shifting the burden to Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
Respondent has argued that it is making a legitimate noncommercial fair use of the disputed domain name. From the evidence presented, it appears that the disputed domain name resolved to a website which resembled Complainant’s website for its Club Med Ixtapa resort, and through which visitors could book stays at Complainant’s Club Med Ixtapa resort.
The Panel considers the question whether Respondent may be found to have a legitimate interest in using Complainant’s mark in a domain name one to be determined under the criteria articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe Des Hotels Meridien, Westin Hotel Management L.P. v. Media Insights a/k/a Media Insights, WIPO Case No. 2010-0211. In Oki Data, the Panel concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
It is evident that in this case these criteria are not met, primarily because Respondent’s website does not disclose Respondent’s lack of a relationship with Complainant; indeed, the website appears to have been crafted to imitate Complainant’s website by, for example, displaying Complainant’s registered logos and design elements, such that it promotes potential confusion among consumers as to the sponsorship of the site.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
Regarding bad faith, the Panel finds that Complainant’s CLUB MED mark has been registered since 1981, and Respondent was clearly aware of Complainant’s mark and rights thereto, as it intended to reference Complainant’s mark through the registration and use of the disputed domain name in order to resell Complainant’s resort services. The Panel further finds that by using Complainant’s CLUB MED mark in the disputed domain name and on the corresponding website and by imitating the look and feel of Complainant’s website in order to resell Complainant’s services without authorization, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.” Policy 4(b)(iv). Respondent has not presented any evidence to dispute this, other than bare assertions that it has not registered the disputed domain name for the reasons set out in section 4(b) of the Policy. Respondent also states that the purpose of the disputed domain name is to criticize Complainant; however, this is not supported by the evidence, which shows that the purpose of the disputed domain name is to offer reservations at Club Med Ixtapa, a service which clearly provides a commercial benefit to Respondent. Respondent’s claim that its purpose is to criticize in manifestly pretextual and his assertion of this baseless contention reinforces the panel’s finding of bad faith registration and use.
The Panel therefore finds that Complainant has carried its burden and satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <clubmedixtapamexico.com>, be cancelled.
Lawrence K. Nodine
Sole Panelist
Date: April 14, 2016