WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Club Med SAS v. FBS Inc, Whoisprotection.biz / Ferzen Erdem

Case No. D2018-1704

1. The Parties

The Complainant is Club Med SAS of Paris, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is FBS Inc, Whoisprotection.biz of Turkey / Ferzen Erdem of Antalya, Turkey.

2. The Domain Names and Registrar

The disputed domain names <clubmed.istanbul>, <clubmedspor.com> and <clubmedspor.org> are registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <clubmed.istanbul>. On July 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <clubmed.istanbul>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on August 1, 2018, whereby it included the disputed domain names <clubmedspor.com> and <clubmedspor.org> to the Complaint.

Pursuant to the Complaint submitted in English and the registrar verification dated July 30, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on the same day, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On August 1, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding and submitted its informal email communications in English.

In accordance with paragraph 17(a)(iii) of the Rules, on August 8, 2018, the Center notified the Parties that the proceeding was suspended until September 7, 2018. On August 24, 2018, the Complainant submitted the second amended Complaint and requested that the proceeding be reinstituted. On the same day, the Center notified the Parties that the proceeding was reinstituted and transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <clubmedspor.com> and <clubmedspor.org>. On August 27, 2018, 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 together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on August 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2018. The Respondent submitted several informal email communications but did not submit a formal response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on September 18, 2018.

The Center appointed Kaya Köklü as the sole panelist in this matter on September 20, 2018. 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 a longstanding French company specializing in the field of all-inclusive holidays. It is globally active and operates 70 holiday resorts in 24 destinations around the world, including in Turkey.

The Complainant is the owner of various CLUB MED trademarks, registered in a large number of jurisdictions. According to the documents submitted by the Complainant, the Complainant is, inter alia, the registered owner of the European Union Trade Mark Registration No. 003431673 (registered on July 4, 2005) and the International Trademark Registration No. 740283 (registered on April 13, 2000), both covering trademark protection for a wide range of goods and services, including operation of hotels and related businesses.

The Complainant also owns and operates various domain names which incorporate its trademark CLUB MED, such as <clubmed.com>, and <clubmed.com.tr>. In 2015, it also acquired the right to use the Top-Level Domain (“TLD”) “.clubmed”.

The Respondent is an individual from Antalya, Turkey.

The disputed domain names <clubmedspor.com> and <clubmedspor.org> were both registered on April 17, 2018.

The disputed domain name <clubmed.istanbul> was registered on April 21, 2018.

The Complainant contacted the Respondent on June 18, 2018 through a cease-and-desist letter for each of the disputed domain names (cf. Annex 9). The Respondent did not reply to any of the three cease-and-desist letters.

After the Complainant filed the Complaint on July 27, 2018, it received a letter from the Respondent (cf. Annex 10). In this letter, the Respondent offered to sell the disputed domain name <clubmed.istanbul> to the Complainant for EUR 15,000.

The disputed domain names previously resolved to parked pages in Turkish stating “website coming soon”. At the time of the decision, none of the disputed domain names resolve to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are identical or at least confusingly similar to its CLUB MED trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is rather argued that the disputed domain names falsely suggest that there is an official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s CLUB MED trademark, when registering and taking control over the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In its informal email communications of August 1 and 7, 2018, the Respondent merely indicated that he is willing to settle the dispute against a compensation payment by the Complainant.

6. Discussion and Findings

6.1. Language of the Proceeding

Although the language of the registration agreement of the disputed domain names is Turkish, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant. The Respondent has failed to raise any objection to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. Furthermore, the Panel is convinced that the Respondent is able to, read, write and understand the English language, as both email communications to the Center on August 1 and 7, 2018 were written in fluent English.

In light of the above, the Panel concludes that the Respondent will not be prejudiced by a decision being rendered in English.

Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark CLUB MED by virtue of a large number of longstanding trademark registrations, including in Turkey, where the Respondent is located.

The Panel further finds that the disputed domain name <clubmed.istanbul> is identical to the Complainant’s CLUB MED trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

The Panel further finds that the disputed domain names <clubmedspor.com> and <clubmedspor.org> are confusingly similar to the Complainant’s registered CLUB MED trademark, as they fully incorporate the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity. The mere addition of the Turkish term “spor”, which means “sports” in the English language, does in view of the Panel not serve to prevent a finding of confusing similarity between the disputed domain names and the Complainant’s CLUB MED trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any relevant evidence to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark CLUB MED in an identical or confusingly similar way within the disputed domain names.

In the absence of a formal Response, there is particularly no indication in the current record that the Respondent is commonly known by the disputed domain names. The Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of rights or legitimate interests in the disputed domain names. A mere allegation by the Respondent (cf. Annex 10) of investment, planning permission and sponsorship in relation to the disputed domain names without providing any evidence or documentation is assessed by the Panel as a self-serving assertion only. Rather, the evidence suggests that the underlying intention of the Respondent has been to sell the disputed domain names to the Complainant, i.e. the trademark owner, for profit.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s CLUB MED trademark, apparently for illegitimate commercial gain and/or to disrupt the Complainant’s business.

In this regard, the Panel notes the reputation and wide recognition of the Complainant’s trademark CLUB MED, also in Turkey. The Panel is convinced that the Respondent must have had this recognized trademark in mind when registering the disputed domain names.

Additionally, the Panel finds that the Respondent’s failure to formally respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain names, it would have probably responded to the Complainant’s contentions.

Another indication of the Respondent’s ill intention is that after the Complaint was filed, he apparently tried to sell the disputed domain name <clubmed.istanbul> to the Complainant for 15,000 EUR. In view of the Panel, this goes far beyond of the out-of-pocket costs for registering and maintaining the disputed domain names.

The fact that the disputed domain names are currently inactive does not prevent a finding of bad faith.

All in all, the Panel cannot conceive of any good faith use of the disputed domain names which is not related to the CLUB MED trademark owned by the Complainant. By registering multiple domain names all containing the Complainant’s CLUB MED trademark, the Respondent appears to be engaged in a bad faith pattern of domain name registration. The Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

The Panel therefore concludes that the disputed domain names were registered and are used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <clubmed.istanbul>, <clubmedspor.com> and <clubmedspor.org> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: October 2, 2018