WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & Co v. Chiu Tien Fu
Case No. D2011-2159
1. The Parties
The Complainant is E. Remy Martin & Co of Cognac, France, represented by Nameshield, France.
The Respondent is Chiu Tien Fu of Taipei, Taiwan, province of China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <人头马.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2011. On December 8, 2011, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On December 13, 2011, Name.com LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 12, 2011, the Center sent an email communication to the Complainant regarding the annexes to the Complaint. The Complainant filed an amended Complaint on December 12, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Response was filed with the Center on January 12, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 30, 2012. 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 company incorporated in France producing and selling high quality cognacs and liquors and the owner of registrations in China for the trade mark人头马 (the “Trade Mark”), the earliest registration dating from October 28, 1996. The Trade Mark has been recognized as a well-known trade mark in China by the Trade Mark Office of the State Administration for Industry and Commerce of the People’s Republic of China.
The Respondent is an individual apparently with an address in Taiwan, province of China.
C. The Disputed Domain Name
The disputed domain name was registered on August 13, 2007.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant and its predecessors in title have been producing and selling high quality cognacs and liquors since 1724. The Complainant sells 95% of its products outside France.
The Trade Mark is well-known in China. The Trade Mark, which literally means “man head horse”, is the Chinese language translation of the Complainant’s Remy Martin Centaur Logo. Persons in China associate the Trade Mark exclusively with the Complainant.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety.
The disputed domain name is resolved to a website offering commercial links, including links to products of the Complainant (the “Website”).
The Respondent has no rights or legitimate interests in the disputed domain name and has registered and is using the disputed domain name in bad faith to intentionally attract Internet users, for commercial gain, to the Website, by creating confusion with the Trade Mark.
The Respondent made the following submissions in the Response.
The Respondent has filed lengthy submissions to suggest the Complainant has failed to make out all three limbs under the Policy.
As regards the first limb, the Respondent asserts the meaning of the Trade Mark is that of the mythical beast, the centaur. The Respondent also claims to have trade mark rights in respect of a centaur logo, although no evidence of registration or use of the Respondent’s logo has been included in the Response.
The Respondent has also referred to the registration by third parties not associated with the Complainant of numerous other domain names comprising the Trade Mark.
The Respondent claims the contents of the Website suggest it commenced using the disputed domain name in connection with a bona fide offering of goods or services before it received notice of the Complaint. The Respondent also asserts it has been commonly known by the disputed domain name, and that it is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent asserts the disputed domain name has not been registered in bad faith and has not been used in order to attract Internet users to the Website for commercial gain. The Respondent further argues the Complainant’s registration of the Trade Mark in respect of cognac and liquors does not confer rights on the Complainant in respect of numerous unrelated goods and services.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be a language other than English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
In exercising its discretion in respect of the language of the proceeding, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Respondent has chosen to file the Response mainly in Chinese, but also with certain submissions in fluent English.
The Panel notes the Website is mainly in the English language. This, coupled with the use of fluent English in the Response (and indeed the fact the Response has been prepared seemingly with no difficulty notwithstanding the filing of the Complaint in English), suggests the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In all the circumstances, this appears to be a proceeding where the Panel would most certainly have had grounds to order that the Response be re-filed in English.
The Panel is however mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. it will accept the filing of the Response in Chinese; and
2. English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several years.
The disputed domain name contains the Trade Mark in its entirety.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The disputed domain name has been resolved to the Website, which offers commercial links to various third party websites, including those offering the same or similar cognac and liquor products to those offered by the Complainant under the Trade Mark.
The Panel notes that use of a domain name in respect of a website offering sponsored commercial links can, in certain circumstances, particularly where the trade mark in question is not well-known or otherwise comprises generic or commonly used words or phrases, amount to a bona fide offering of goods or services. However, in all the circumstances of this case, and given also the Panel’s findings below in respect of bad faith, the Respondent would need to provide compelling reasons as to why such use is in all the circumstances justified. This is particularly so where the disputed domain name contains a well-known trade mark, as is the case in this proceeding.
The Panel does not find the Respondent’s submissions on the question of the Respondent’s alleged rights or legitimate interests in respect of the disputed domain name at all convincing. The Panel would also note whether or not there have been other domain names comprising the Trade Mark registered by third parties is of no relevance to the issues to be determined in this proceeding.
The Panel finds the Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no credible evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no credible evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds, in all the circumstances of this case, the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Panel concludes that, in all the circumstances, the Respondent has registered and uses the disputed domain name comprising the Trade Mark, without the authorisation or approval of the Complainant, in order to profit by attracting Internet users to the Website. The Panel finds such registration and use of the Trade Mark is clear evidence of bad faith.
The Respondent asserts the registration and use of the Trade Mark by the Complainant in respect of cognacs and liquors does not confer on the Complainant rights in respect of unrelated goods. Given the finding by the Trade Mark Office of The State Administration for Industry and Commerce of the People’s Republic of China that the Trade Mark is well-known, the Panel would query whether this assertion is correct. In any event, it is well established under UDRP jurisprudence that, certainly in terms of the first limb under the Policy, the question of the goods or services in respect of which the trade mark in question has been used and/or registered is not relevant in determining whether the domain name in question is confusingly similar to the relevant trade mark.
The facts of this proceeding are incontrovertible that the Respondent has been using the disputed domain name in respect of a website offering sponsored commercial links relating to, inter alia, cognacs and liquors, the goods in respect of which the Trade Mark has been used and registered, and in respect of which the Complainant is well-known worldwide.
The Panel does not find the submissions of the Respondent in respect of the third limb under the Policy convincing.
The Panel therefore finds, in all the circumstances of this proceeding, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <人头马.com > be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: February 13, 2012