WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin v. Ramy Fahel
Case No. D2001-1026
1. The Parties
The Complainant in this administrative proceedings is E. Remy Martin & Cie, SA Corporation, a company located at 20, rue de la Société Vinicole, 16102, Cognac, Cedex, France, hereinafter the "Complainant", represented by Eric Schahl, e-Lex Conseil, with offices at 68 rue Pierre Charon, 75008 Paris, France.
The Respondent is Ramy Fahel, with address at P.O. 6566, Mclean, VA 22106-6566, USA, hereinafter the "Respondent", represented by Zak Muscovitch, Neinstein & Associates, with offices at 1200 Bay Street, Suite 700, Toronto, Ontario, Canada.
2. Domain Names and Registrar
The domain names at issue are <remyxo.com>, <remyxo.net> and <remyxo.org>, hereinafter the "Domain Names".
The registrar is Network Solutions Inc. <remyxo.com> was registered on October 16, 1999, while <remyxo.net> and <remyxo.org> were registered on September 21, 2000.
3. Procedural History
The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the Complainant's Complaint by electronic version on August 14, 2001, and by hardcopy with the exhibits on August 15, 2001.
On August 15, 2001, the Center sent by email to the Complainant, to its representative and to the Respondent Acknowledgement of Receipt of Complaint.
On August 17, 2001, the Center transmitted via email to Network Solutions, Inc. a request for Registrar Verification relating to this case. On August 24, 2001, Network Solutions Inc transmitted via email to the Center, the Verification Response, confirming that a copy of the Complaint has been sent to Network Solutions Inc., that the Domain Names are registered with Network Solutions Inc., and that the Respondent is the current registrant of the Domain Names. It provided the full contact details related to the Domain Names available in its database, confirmed that the Uniform Dispute Resolution Policy is applicable and that the Domain Names registrations are in active status.
On August 27, 2001, the Center has verified that the Complaint satisfies with the formal requirements of the ICANN Uniform Domain Names Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Names Dispute Resolution (the Supplemental Rules).
On the same day, the Center transmitted to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and a copy of the Complaint via post/courier and email in accordance with the following contact details:
Registrant, Administrative Contact, Billing Contact:
Mclean, VA 22106-6566
The Center advised that the Response was due by September 16, 2001.
Having received the Response, the Center issued on September 19, 2001, to the email address of both parties an Acknowledgement of Receipt of Response.
On September 25, 2001, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received, on September 25, 2001, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on September 27, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which Mr. Geert Glas was formally appointed as the Sole Panelist. On the same day, the Center transmitted to the Sole Panelist the Case File. The Projected Decision Date is October 11, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complainant is a well known company which produces and commercialises alcoholic beverages, and primarily brandy. Use is thereby made of the appellation of origin cognac.
The Complainant sells different types of cognac products, whereby a distinction is made, among others, depending on the age. For aged products the abbreviation XO (extra old) is added.
The Complainant is the holder of several trademarks such as the US trademarks REMY and REMY MARTIN FINE CHAMPAGNE COGNAC XO and the international and French trademarks REMY MARTIN XO SPECIAL and CENTAURE XO REMY MARTIN.
All these trademarks are registered for goods of class 33.
The Respondent has registered the Domain Name <remyxo.com> on October 16, 1999, and the Domain Names <remyxo.org> and <remyxo.net> on September 21, 2000.
5. Parties Contentions
The Complainant contends that the Domain Names are confusingly similar to its trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names firstly because regarding the notoriety of the signs REMY MARTIN XO that has been established by the Complainant's business, it is legitimate and necessary for the Complainant to have right on the Domain Names, and secondly because the Complainant is not known for any activities under the names REMY XO, which do not correspond to his name. It also contends that it has never authorized Respondent to use its trademarks and that no use is made by Respondent of the Domain Names.
The Complainant contends that the Respondent has registered the Domain Names in bad faith. It contends that the Respondent could not have been unaware of the notoriety of the Complainant's trademarks and products and that by registering the Domain Names, be intended only to benefit from this notoriety. It contends also that the Domain Names were registered or acquired primarily for the purpose of selling them to the Complainant or to a competitor, this intention being confirmed by the fact that three domain names have been registered and that none of them have been exploited until now.
The Respondent contests that the similarity between its Domain Names and the Complainant's trademarks is such as leading to confusion.
The Respondent alleges that he has legitimate rights and interests in the Domain Names.
He contends that although his first name is Ramy, he is commonly known by the nickname Remyxo, 'remy' being the common pronunciation of its first name, and 'XO' standing for hugs and kisses.
He contends that his interest is to post photos of his life on a website related to a domain name under which he is commonly known by his friends and family.
He affirms that while his website has been operational, when switching web hosting, the website has been disabled.
He also contends that by registering the email address email@example.com, he has shown preparations to use the Domain Names.
The Respondent alleges that he is not using the Domain Names as trademarks in any way that interferes with Complainant's business and that he has not registered or is using the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Names registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and,
(3) that the Domain Names has been registered and used in bad faith.
a. Identity or confusing similarity
The Complainant has registered several trademarks in a number of countries all containing the word REMY. Several of these trademarks also contain the sign XO.
While only one of its trademarks consists of the word REMY, this word REMY is the main part of all the Complainant's other trademarks. It is the sign that above all distinguishes the Complainant's products.
XO is a generic sign used to define an alcohol as being eXtra Old. It is commonly used and recognized by the public as indicating such characteristic.
The Administrative Panel therefore finds that the Domain Names are confusingly similar to the Complainant's trademarks and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for any domain name corresponding to its trademark.
The Respondent contends he is commonly known by the nickname REMYXO.
Pursuant to article 4.c.(ii) of the Policy, a Respondent can indeed have a right or legitimate interest in a domain name if he can demonstrate that he is commonly known by that name.
As a consequence, if the Respondent can demonstrate that he is commonly known by the name REMYXO, the transfer of the Domain Names sought by the Complainant cannot be ordered.
The Panel is however struck by the feeble evidence put forward by the Respondent to support his claim.
The Respondent first of all provides a list of names and email addresses of persons who would know him by this nickname.
However, by only providing a list of names and addresses, without any statement or testimony confirming these allegations, the Respondent does not establish its claim.
The Respondent also provides a picture without date of a hat bearing the word 'REMYXO', and alleges that it is a gift featuring his nickname.
The Panel finds that this picture falls short of conclusive evidence that the Respondent is commonly known under the Domain Names he has registered.
In previous successful applications of this "nickname exception", the Respondents were able to convincingly establish that they were indeed commonly known by such name: WIPO Case No. D2000-0518 (birth certificate), WIPO Case No. D2001-0537 (citizenship certificate and third party evidence).
The contrast with the lack of such evidence provided by the Respondent is striking. Clearly, if the Respondent is commonly known by the name REMYXO, he should be able to provide conclusive evidence of his nickname (testimonies, correspondence, etc.).
In the absence of such conclusive evidence, the Panel finds that the Respondent has failed to demonstrate that he is commonly known by the name REMYXO. Consequently, in the line of decisions in WIPO Case Nos. D2000-0308, D2000-0396, D2000-0596, the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
c. Registration and Use in Bad Faith
The Respondent's first name is Ramy (with an "a" instead of an "e" as in the Domain Names and the invoked trademarks). The Respondent does not give any reason why he has not registered a domain name consisting of his first name Ramy. If it is true, as he claims, that this "a" is pronounced as an "e" in his country, this would of course also be the case for <ramyxo.com>.
The combination of the supposed pronunciation of the Respondent's first name with the XO sign consists in a sign that is confusingly similar to the Complainant's trademarks.
The Complainant's trademarks are widely used and broadly known. Therefore, the Panel considers that the choice of Domain Names confusingly similar to the Complainant's trademarks by the Respondent cannot result from a mere coincidence.
Moreover, the Panel finds it odd that the Respondent registered not one but three Domain Names. According to the Respondent his only purpose was to post personal pictures. A single domain name would therefore have been sufficient. By registering the three Domain Names, the Respondent has prevented the Complainant from registering domain names that are similar to its trademarks and that may have reflected its trademarks. Therefore, the Panel finds that the Respondent was, when registering the Domain Names, acting with the purpose of disrupting the Complainant's business and therefore is considered to have registered the Domain Names in bad faith.
Contradictory statements are made with regard to the use which the Respondent made or would have made of the Domain Names.
While the Complainant states that no use has been made by the Respondent of the Domain Names, the Respondent alleges that the Domain Names <remyxo.com> and <remyxo.net> have been connected to a personal website, which link ceased to be operational when switching web hoster. No use has apparently ever been made of the Domain Name <remyxo.org>.
In order to establish this good faith use, the Respondent produces as evidence some printed pages consisting of a compilation of pictures (jpg.files). These pages can however not be considered conclusive evidence, as they do not display a date and are not directly printed from the website but from a personal computer folder.
The Administrative Panel is therefore in the impossibility to convincingly deduce from these facts and the evidence provided whether the Respondent has indeed made a good faith use of the Domain Names <remyxo.com> and <remyxo.net> or whether he has been passively holding these Domain Names in bad faith. This does not seem to be the case with regard to the <remyxo.org> Domain Name. The Respondent does not contend to have ever used this Domain Name which can be said to have been held passively and in bad faith by the Respondent (see decision in WIPO Case No. D2000-0003).
While the Administrative Panel cannot exclude that such bad faith use has also been made with regard to the Domain Names <remyxo.com> and <remyxo.net>, the Administrative Panel considers that within the strict conditions and boundaries of the Policy and the Rules, the doubt surrounding the bona fide use of these Domain Names should benefit the Respondent rather than the Complainant.
Considering the above facts, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy with regard to the Domain Name <remyxo.org> and that the Respondent has registered and used <remyxo.org> in bad faith.
The Administrative Panel however finds that this burden has not been met with regard to the Domain Names <remyxo.com> and <remyxo.net> which have not been cumulatively proven to have been registered and used in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Names registered by the Respondent are similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Administrative Panel finds that of the three Domain Names, only the Domain Name <remyxo.org> has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(I) of the Policy, the Administrative Panel requires that the registration of the Domain Name<remyxo.org> be transferred to the Complainant.
Dated: October 11, 2001