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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club Mйditerranйe S.A. v. Clubmedical
Case No. D2000-1428
1. The Parties
The Complainant is CLUB MEDITERRANEE S.A., 11 rue de Cambrai, 75019 Paris, France (sometimes referred to hereinafter as "Club Med").
The Respondent is CLUBMEDICAL, 1336-5 1F, Maeho-Dong Susung-Gu, Taegu, 706-140, Korea.
2. The Domain Name and Registrar
The domain name in dispute is <clubmedical.net>.
The Registrar with which the domain name is registered is Register.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on October 19, 2000, by e-mail and in hardcopy on October 23, 2000.
On November 27, 2000, the Center sent the corresponding Request for Registrar Verification in connection with this case to Register.com. On December 1, 2000, the Registrar's verification response confirmed that the Registrant was Clubmedical and that the domain name <clubmedical.net> was in "active" status.
After the Center had verified that the Complaint satisfied the Formal Requirements of the Policy, Rules and Supplemental Rules, the Center notified on December 7, 2000, by 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 28, 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 12, 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 10, 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 12, 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 Med’s bases its complaint on exclusive worldwide rights in the names "CLUB MED" and "CLUB MEDITERRANEE".
Club Med explains that it has used the "CLUB MED" mark throughout the world for more than twenty-eight years, and the "CLUB MEDITERRANEE" mark throughout the world for the past fifty years, to identify its well-known resort hotels, all-inclusive packaged vacations and 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 name "CLUB MED", and no less than an additional 74 active registrations in the United States and Europe for marks containing the name "CLUB MEDITERRANEE" (Complainant's Exhibit D annexed to its Complaint which is a summary of 148 registrations and a sample registration certificate for one of those marks).
Club Med also owns at least 12 active trademark and service mark registrations in Korea for marks containing the names "CLUB MED" or "CLUB MEDITERRANEE" (Complainant's Exhibit E).
The Complainant conducts business over the Internet through several web sites comprised of the term "Club Med", including at the domain name address "www.ClubMed.com" in the United States and at the domain name address "www.ClubMed.co.kr" in Korea (Complainant's Exhibit F).
The Complainant has submitted factual allegations, which may be reproduced as follows:
(i) On or about August 23, 2000, Club Med learned that the domain name "clubmed.net" was registered without Club Med’s authorization; it conducted a search in the WHOIS database at Network Solutions which revealed that the domain name was registered on August 9, 2000, in the name of a company operating in Korea under the name "DotDNS.com" (Complainant's Exhibit G); the latter is the owner of countless domain names, including the 50 domain names not one of which leads to an active web site (Complainant's Exhibit H); "clubmed.net" was inactive at this time.
(ii) As of August 23, 2000, an individual named "Hochul Jung" - also known as "Jung Hochul" - , was listed with Network Solutions as the administrative contact, technical contact and zone contact for the domain name "clubmed.net" and, upon information and belief, is an alter ego of DotDNS.com (Complainant's Exhibits G and H) since he is listed with Network Solutions as the sole contact person for every one of the 50 domain names registered in the name of DotDNS.com.
(iii) On August 25, 2000, counsel for Club Med (Mr. Gregg Reed) delivered a letter to DotDNS.com (care of Respondent) by e-mail and overnight delivery, demanding, inter alia, that the domain name at stake be transferred to Club Med (Complainant's Exhibit I).
(iv) The Respondent answered thereto by e-mail in the following manner (spellings left uncorrected; Complainant's Exhibit J):
I will bild a site. (club medical site)
"club med" trademark is only your company?
search club med
I’m busy now. Dot’t send email.
(v) On August 26, 2000, - one day after Club Med sent its demand letter to DotDNS.com (care of Respondent) by e-mail and overnight delivery - DotDNS.com shifted the ownership of "clubmed.net" to Mr. Hochul Jung (under the name "Jung Hochul"); all contact information for the "clubmed.net" domain name remained the same with Register.com.
(vi) On that same date, "clubmed.net" was registered through Network Solutions in the name of an entity purportedly named "clubmedical" which does not have an independent address; it is the same regularly used by DotDNS.com (Complainant's Exhibit K).
(vii) At some time between August 26, 2000, and August 28, 2000, - just two days after Club Med sent its demand of transfer letter to DotDNS.com (care of Respondent) - the content of the web site at www.ClubMed.net was altered. The site, which was previously inactive, was modified to automatically forward visitors to http://my.dreamwiz.com/ibclub/clubmed (the "Dreamwiz Page"; Complainant's Exhibit M).
(viii) The words "Club Med" are prominently displayed at the top of the Dreamwiz Page. Close inspection reveals, however, that the words actually read "Club Medical." This is not at first evident to the visitor because the Dreamwiz Page has been set up on an entirely blue background, on top of which the word "Club" is displayed in white, the first three letters of the word "medical" are displayed in yellow, and the last four letters of the word "medical" are displayed in a shade of blue nearly identical to the backdrop of the web page (See Complainant's Exhibit M).
The words "Club Med[ical]" are displayed on the Dreamwiz Page above four photographs of doctors. The page purports to require an "id" and "pass" to proceed further within the web site which does not provide the visitor with any information as to how any such identification number or password may be acquired, does not include any explanatory text concerning the nature or purpose of the web page, does not contain any information or links whatsoever, and does not provide the visitor with an e-mail address or other means of contacting the web page owner for inquiries or for information.
Whereas the Internet user who attempts to visit www.ClubMed.net is automatically forwarded to the Dreamwiz Page; the Internet user who attempts to visit www.ClubMedical.net is automatically forwarded to a full-screen advertisement for DomainsAreFree.com, a company operating as a web hosting provider at www.DomainsAreFree.com. The page to which the user is forwarded includes a link to an e-mail address at which the owner of the "clubmedical.net" domain name can be contacted (Complainant's Exhibit N).
(ix) On August 31, 2000, the domain name GREAT-DOMAIN-FOR-SALE.COM was registered for the first time by an entity purportedly named "Great-domain-for-SALE." The contact address for that company reads: Internet, Internet, 1004, KOREA (Complainant's Exhibit O: printout of a web-based WHOIS database search reflecting this information).
(x) On or about October 16, 2000, the contact details for "clubmedical.net" were modified. The name DotDNS.com (underneath Respondent’s name) was deleted and replaced with the name "Great-domain-for-sale.com." In the modified ownership record for "clubmedical.net", the entity purportedly named "Great-domain-for-sale.com" has the same address as DotDNS.com.
(xi) Mr. Hochul Jung, DotDNS.com and the Respondent plainly have strong affiliations with Great-domain-for-SALE.com and, upon information and belief, are alter egos of each other and of Great-domain-for-SALE.com (see Complainant's Exhibits A and H).
(xii) Ownership records for "clubmedical.net" now state that Mr. Hochul Jung can be reached by e-mail at master@Great-Domain-For-Sale.com (Complainant's Exhibit A).
5. Parties’ Contentions
The Complainant mainly submits the following.
(i) The domain name <clubmedical.net> is identical or confusingly similar to the trademark "CLUB MED"; this is clear from the fact that Club Med's famous trademark is wholly incorporated into the domain name and forms the dominant portion of the domain name; in addition, the confusing similarity between the term "clubmedical" and the mark "CLUB MED" is evident by the reference to the so called "Dreamwiz Page" which has been designed in a way to call the attention only to the term "CLUB MED".
The said domain name is also identical or confusingly similar to the "CLUB MEDITERRANEE" mark.
(ii) The Respondent has no legitimate interests in the domain name "clubmedical.net"; Club Med has exclusive worldwide rights in and to the names "CLUB MED" and "CLUB MEDITERRANEE" by virtue of Club Med’s decades of substantial and continuous use of those names and its more than 160 active trademark and service mark registrations covering those names in the United States, Europe and Korea alone. In addition, the Respondent has not been commonly known by the domain name in dispute and has acquired no trademark or service mark rights in that domain name. Moreover, Club Med has never authorized the Respondent its alter ego to use the name "CLUB MED" as any part of a trade name, trademark, service mark or domain name.
The Respondent is not able to demonstrate any rights to and legitimate interests in the domain name in dispute pursuant to Paragraphs 4 (c) (i), 4 c (ii) and 4 c (iii) of the Policy. Prior to August 25, 2000, - the date that Club Med's counsel put Mr. Hochul Jung on notice of this dispute - neither DotDNS.com nor Mr. Hochul Jung had used the domain name "clubmed.net" in connection with any offering of goods or services, much less a bona fide offering. On August 26, 2000, DotDNS.com transferred the inactive web site "clubmed.net" to Mr. Hochul Jung in bad faith, and it is not until on or about August 28, 2000, that Mr. Hochul Jung added content to the said web site by automatically forwarding visitors to the Dreamwiz Page as described above. As of today's date neither DotDNS.com, Mr. Hochul Jung, nor the Respondent has used "clubmedical.net" in connection with any offering of goods or services, much less a bona fide offering. The domain name address leads to an advertisement for DomaisAreFree.com and, moreover, is for sale. Finally, the Respondent acquired "clubmedical.net" as part of a scheme targeted against Club Med, and is now using such domain name for no purpose other than offering it for sale.
(iii) The Respondent has registered and is using the "clubmedical.net" domain name in bad faith on the following grounds.
DotDNS.com is a company that offers services related to the sale and leasing of domain names, and which owns countless domain names including the 50 domain names, none of which lead to active sites. As such, DotDNS.com is operating as a "Domain Name Speculator," i.e., one that registers domain names with the hopes of selling or licensing them in the future, and without specific uses in mind for those domain names at the time of registration (See, e.g., J. Crew Int’l, Inc. v. crew.com, WIPO Case No. D2000-0054, Apr. 20, 2000). A Domain Name Speculator crosses the line and acts in bad faith within the meaning of the Policy when it knowingly acquires a domain name that incorporates another company’s famous trademark or service mark for speculative purposes. This is the case in the instant matter since DotDNS.com registered the domain name "clubmed.net" despite the fact that it had notice of Club Med’s prior and exclusive rights in the world-famous "CLUB MED" mark. Moreover, the term "Club Med" is so unique and distinctive that it could not reasonably have been coined by DotDNS.com absent knowledge of the existence of the Complainant and its famous "CLUB MED" mark.
In the inconceivable case that neither DotDNS.com nor Mr. Hochul Jung knew of Club Med’s exclusive rights in the name "CLUB MED" at the time DotDNS.com first registered the domain name "clubmed.net", both were specifically placed on notice of Club Med’s exclusive rights in the "CLUB MED" mark prior to the date that DotDNS.com transferred the domain name to the Respondent, by virtue of Club Med’s demand of transfer letter dated August 25, 2000.
The timing of the change in ownership of the "clubmed.net" domain name from DotDNS.com to Mr. Hochul Jung, having occurred just one day after Club Med sent those parties an e-mail demanding the return of the infringing domain name, evidences a premeditated scheme by those parties to insulate themselves from liability as cybersquatters.
Mr. Hochul Jung’s bad faith registration and use of "clubmed.net" is further evidenced by the fact that, upon receiving Club Med’s demand letter, Mr. Hochul Jung modified the "clubmed.net" web site (which prior to that time had been inactive) to create the false impression that a legitimate business was being conducted there. Specifically, within two days of receiving Club Med’s demand letter, Mr. Hochul Jung created the Dreamwiz Page, modified the site to automatically forward visitors to that page, and then acquired the domain name "clubmedical.net" in the name of a fictitious entity named "clubmedical".
Despite Mr. Hochul Jung’s hurried efforts to manufacture the appearance of a good faith basis for owning the domain name "clubmed.net", it remains clear that Mr. Hochul Jung’s creation of the Dreamwiz Page, modification of the "clubmed.net" web site to forward the user to the Dreamwiz Page, and acquisition of the domain name "clubmedical.net" constitute nothing more than a thinly veiled attempt to conceal wrongful conduct and insulate Mr. Hochul Jung and/or DotDNS.com from liability as cybersquatters.
The fraudulent scheme of Hochul Jung, a/k/a Jung Hochul, d/b/a DotDNS.com, d/b/a clubmedical, d/b/a Great-Domain-For-Sale.com, is evidenced, inter alia, by the following:
a. The Dreamwiz Page was created within two days of the date that Club Med demanded the return of the "clubmed.net" domain name.
b. The Dreamwiz Page purports to offer some type of service under the name "Club Medical," but has been intentionally designed in a way to call attention only to the term CLUB MED.
c. The Dreamwiz Page does not include any explanatory text concerning the nature or purpose of the web page.
d. The Dreamwiz Page contains no information or links whatsoever.
e. The Dreamwiz Page purports to require an "id" and "pass" to proceed further within the web site, but does not provide the visitor with any information as to how any such identification number or password may be acquired.
f. The Dreamwiz Page does not provide the visitor with an e-mail address or other means of contacting the web page owner for inquiries or for information.
g. On August 26, 2000, - the same day that DotDNS.com shifted ownership of "clubmed.net" into the name of Mr. Hochul Jung - the domain name "clubmedical.net" was registered through Network Solutions in the name of an entity purportedly named "clubmedical." The entity "clubmedical" is plainly fictitious and nothing more than an alter ego of Mr. Hochul Jung and/or DotDNS.com, as evidenced by the fact that "clubmedical" has the same address as DotDNS.com, and has Mr. Hochul Jung listed as its administrative contact with Network Solutions.
h. Whereas the web site "clubmed.net" automatically forwards Internet users to the sham Dreamwiz Page, the web site "clubmedical.net" remains inactive and forwards users to DomainsAreFree.com. This would not be the case if Mr. Hochul Jung was conducting any legitimate web-based activity under the name "club medical."
That "clubmedical.net" is being offered for sale is clear from the fact that the contacts for the site were changed from DotDNS.com to yet another fictitious entity, with a fictitious address, referred to as "Great-domain-for-sale.com" (see e.g., Parfums Christian Dior v. QTR Corp., WIPO Case No. D2000-0023, March 9, 2000: registration and use in bad faith found where the public records on the domain name clearly indicated an offer for sale); moreover, Great-domain-for-sale.com is not a legitimate entity, as evidenced by the fact that it lists its address as internet, internet, 1004, Korea.
DotDNS.com and Mr. Hochul Jung registered "clubmedical.net" (in the name of Respondent) despite the fact that they had notice of Club Med's prior and exclusive rights in the world famous "CLUB MED" mark; moreover, the term "CLUB MED" is so unique and distinctive that it could not reasonably have been coined by DotDNS.com, Mr. Hochul Jung or the Respondent, absent knowledge of the existence of the Complainant Club Med and its famous "CLUB MED" mark.
For all of the reasons set forth above, there are overwhelming circumstances indicating that DotDNS.com and Mr. Hochul Jung registered or acquired the domain names "clubmed.net" and then "clubmedical.net" primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Club Med within the meaning of Paragraph 4 (b) (i) of the Policy.
Likewise, for all the reasons developed above, DotDNS.com and Mr. Hochul Jung (in their own names and in the name of Respondent) have engaged in a pattern of conduct aimed at preventing Club Med from reflecting its famous mark in a corresponding domain name according to Paragraph 4 (b) (ii) of the Policy.
Finally, given the above, DotDNS.com and Mr. Hochul Jung (in their own names and in the name of Respondent) have engaged in a bad faith scheme to profit from ownership of domain names corresponding to Club Med’s famous mark and then engaging in bad faith conduct to conceal that scheme.
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
The key issue in the instant matter is whether the domain name at stake, <clubmedical.net>, is "confusingly similar" to the Complainant's trademarks "CLUB MED" according to Paragraph 4 (a) (i) of the Policy since, at first glance, similarity between the two is not given.
Pursuant to intellectual property law, two marks may be considered to be identical or confusingly similar if the distinctive part of the designation is identical, but a non-distinctive addition is made (e.g. "Coca Cola" and "Coca Cola drink"; see Arthur E. APPLETON and Kamen TROLLER, Domain Name Arbitrations: A Review of Selected Decisions, in Bulletin of the Swiss Arbitration Association ("ASA"), No. 4, 2000, p. 725).
Determining whether a domain name and a service or trademark are confusingly similar is not an easy task because there is no guidance concerning what is meant by such terms in the Policy and Rules (see APPLETON, TROLLER, idem, p. 722).
The matter at issue is between the situation where the registrant combines a well-known domain name with other words, phrases or initial (e.g. "bostonyahoo.com") and the situation where the registrant seeks to take advantage of internet users who mistype a well-known domain name ("typosquatting"; e.g. "actavista.com"; see APPLETON, TROLLER, ibidem).
Examination of various decisions already rendered under the WIPO auspices and dealing with this particular issue shows that panelists have been inclined to take a broad view concerning misspelling that are confusingly similar, intertwining elements that are merely to be treated under the "bad faith" examination of Paragraph 4 (a) (iii) of the Policy with the "confusingly similar" analysis required by Paragraph 4 (a) (i) (see APPLETON, TROLLER, idem, p. 723 with cases references; see in particular Yahoo! Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273, p.8).
In this case, the Sole Panelist shall not depart from such approach. Not only does the domain name in dispute incorporate the famous and worldwide trademark "CLUB MED" that form the dominant portion of the domain name, as pointed out by the Complainant. But also a quick look at the so called "Dreamwiz Page" (Complainant's Exhibit M) shows the Respondent's more than questionable maneuver: only two words "CLUB" and "MED" (in respectively white and yellow colors on blue background) are really visible whilst the second portion of the second word "…ICAL" is displayed in a shade of blue nearly identical to the backdrop of the web page (see Exhibit M). The Sole Panelist considers therefore that confusing similarity is established as to both the domain name address and related web site that calls the attention only to the terms "CLUB MED".
The issue of whether "clubmedical.net" is also confusingly similar to the CLUB MEDITERRANEE" mark may be left opened in view of the affirmative decision on its confusingly similarity to "CLUB MED" trademark.
Lastly, the Complainant has established its rights in the trademarks "CLUB MED" and "CLUB MEDITERRANEE" with numerous trademark registrations for these two names in the United States and Europe but also in south Korea (see Club Mйditerrannйe v. Yosi Hasidim, Case D2000-1350 paragraph 6 A., p. 4 with references).
B. Rights or Legitimate Interests of 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 finding that the Complainant has established that the trademarks "CLUB MED" and "CLUB MEDITERRANEE" have been famous in Europe and the United States for quite a while. The Sole Panelist is also satisfied that such marks - which are also registered in South Korea - 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.
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, at least under Paragraphs 4 (b) (i) and 4 (b) (ii) 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 "clubmedical.net" 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".
In particular, the description of the course of events of the matter and the contents of the famous "Dreamwiz Page" (Complainant's Exhibit M) made by the Complainant is illustrative of the dubious conduct of the Respondent - which has not denied any single allegation made against him - not only in his overall dealing in domain names matters, but also in respect of the domain name at stake, which may be qualified as a typical example of organized cybersquatting.
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 "clubmedical.net" be transferred to the Complainant.
Dated: January 25, 2001