WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & Co and CLS Rémy Cointreau SAS v. Ke Zhao
Case No. D2011-0523
1. The Parties
Complainants are E. Remy Martin & Co and CLS Rémy Cointreau SAS (collectively and indistinctly, the “Complainant”) of Cognac, France, represented by Nameshield, France.
Respondent is Ke Zhao of Shanghai, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name is <remymartinvsop.com> which is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2011. On March 22, 24, and 25, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name and reminders. On March 26, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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. Complainant filed an amended Complaint on March 23, 2011.
The Center verified that the Complaint, as amended, 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 Respondent of the Complaint, and the proceedings commenced on March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 20, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 29, 2011. This Panel finds that it was properly constituted. This 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.
This Panel issued the Procedural Order No. 1 on May 16, 2011, requesting Complainant to clarify whether Complainant is one single legal entity or two different legal entities. On the same day, Complainant filed its submission in reply to the Procedural Order No. 1.
4. Factual Background
Complainant belongs to the Rémy Cointreau Group, with headquarters in France, whose origins date back to 1724. The Rémy Cointreau Group is engaged in the production of cognacs, liquors and champagne.
E. Remy Martin owns numerous international trademark registrations including the term REMY MARTIN, among them: REMY MARTIN, international trademark registration No. 508092, registered in 1986, international classes 32 and 33; REMY-MARTIN, registration No. 457204, registered in 1980, international classes 32 and 33.
The disputed domain name was created on February 23, 2011.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
The Rémy Cointreau Group is the result of the merger in 1990 of the holding companies of the Hériard Dubreuil and Cointreau families that controlled E. Rémy Martin & Cie SA and Cointreau & Cie SA respectively.
Complainant has registered numerous domain names, among others: <remymartin.com> registered in 1997; <remy-martin.com> registered in 1998; and <remymartin.fr> registered in 1996.
The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
The disputed domain name is confusingly similar to Complainant’s trademarks REMY MARTIN. The term “VSOP” designates a grade of quality of cognac.
The addition of the suffix “VSOP” and a gLTD “.com” are not sufficient to escape the finding that the disputed domain name is confusingly similar to Complainant’s trademarks and does not change the overall impression of the designation as being connected to a trademark of Complainant.
Moreover, the term “Remy Martin VSOP” is known especially in relation to Complainant and it has no meaning whatsoever in English or in any other language. A Google search of the term “Remy Martin VSOP” displays several results related to Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related in any way with Complainant.
Complainant does not carry out any activity for, nor has any business with Respondent. Neither license nor authorization has been granted to Respondent by Complainant to make any use or apply for registration of the disputed domain name.
The website associated to the disputed domain name displays commercial links in French. Moreover, the website informs the Internet users that the disputed domain name is on sale. The disputed domain name is on sale through the website “www.sedo.com”.
Respondent has registered the disputed domain name to attempt to create confusion with Internet users and only for the purpose of obtaining financial gain.
Respondent registered and is using the disputed domain name in bad faith.
Complainant contends that its trademark REMY MARTIN is well-known in the world. Respondent was aware of Complainant and tried to create a likelihood of confusion by registering the disputed domain name, which is confusingly similar to a trademark in which Complainant has rights.
Moreover, the disputed domain name displays: “This domain name is for sale” (USD 60 minimum through SEDO). The disputed domain name was registered on February 23, 2011, with the registrar Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. The cost of such registration of a domain name in “.com” is USD 12.99. It is well established that registering a domain name for the primary purpose of offering for sale, rent or otherwise transfer of the domain name for an amount in excess of the out-of-pocket cost is evidence that the disputed domain name was registered and being used in bad faith (Complainant relies on adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372).
Given the distinctiveness of Complainant’s mark it is reasonable to infer that Respondent has registered the disputed domain name with full knowledge of Complainant’s marks and uses it for the purpose of misleading and diverting Internet traffic. Respondent registered the disputed domain name in bad faith and used it only in purpose of sale to Complainant.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the REMY MARTIN trademark.
The disputed domain name entirely incorporates the REMY MARTIN trademark, adding the suffix “VSOP”, which is a common abbreviation for “very superior old pale” and generally used to designate a quality grade of cognac.2
The addition of such descriptive suffix is not enough to avoid confusing similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (e.g., Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375; Crédit Industriel et Commercial S.A v. Yu Ming, WIPO Case No. D2005-0458).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s REMY MARTIN trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has no relationship with Respondent and that it has never licensed or authorized Respondent to use its trademark or to register the disputed domain name.
Further, it is undisputed that REMY MARTIN is a trademark well-known internationally and that the products covered under such trademark are marketed on a world-wide basis.
Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links. The use of sponsored links that generate revenue might provide a legitimate interest. However, in this case it is undisputed that REMY MARTIN is a trademark well-known internationally and that the products covered under such trademark are marketed on a world-wide basis. Given the widespread recognition of the REMY MARTIN trademark and its association with cognac, the addition of the descriptive suffix “VSOP” adds an obvious connection between the disputed domain name and Complainant, and thus it seems to this Panel that Respondent is clearly taking advantage of such trademark’s reputation with the purpose of diverting Internet users through such links to other websites3. Such use of Complainant’s trademark by Respondent does not establish rights or legitimate interests on the part of Respondent in the disputed domain name.
In the file of this case there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name on the part of Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which incorporates Complainant’s internationally well-known REMY MARTIN trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration the international recognition of the REMY MARTIN trademark, which is totally incorporated in the disputed domain name, albeit with the addition of the suffix “VSOP” which is clearly connected with the products marketed under such trademark, it is clear that Respondent should have been fully aware of the existence of Complainant’s trademark and the products marketed thereunder at the time it obtained the registration of the disputed domain name5.
The use of a domain name for a parking website which may generate pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s well-known trademark, coupled with a descriptive suffix that precisely is generally used in connection with the kind of products marketed under such trademark, there is no doubt that Respondent is intentionally attempting to attract Internet users for financial gain creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name, when in fact there is no such connection.
In light of the above, this Panel finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <remymartinvsop.com> be transferred to E. Remy Martin & Co and CLS Rémy Cointreau SAS.
Dated: May 20, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 In the Cognac Appellation, VSOP is an ageing mention indicating that the youngest eau-de-vie in the blend has aged at least for four years (Bureau National Interprofessionnel du Cognac).
3 See Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636: “It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy . . . For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name . . . On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name.”
4 See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given . . . Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the Complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the Respondent to rebut the Complainant’s assertion”.
5 See Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629: “The Panel finds that Respondent in all likelihood had Complainant’s well-known mark ACCUTANE in mind when registering the Domain Name. ACCUTANE is a fanciful mark; that combination of letters has no known meaning other than as a reference to Complainant’s product”.