WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & C° v. J Pepin - Emedia Development Ltd
Case No. D2013-1751
1. The Parties
The Complainant is E. Remy Martin & C° of Cognac, France, represented by Santarelli, France.
The Respondent is J Pepin - Emedia Development Ltd of Stuttgart, Germany, self-represented. For discussion of the identity of the Respondent, see sections 3 and 6-D(ii) below.
2. The Domain Names and Registrar
The disputed domain names <louisxiiicasino.com>, <louisxiiihotel.com>, and <louisxiiihotels.com> are registered with 1API GmbH (the “Second Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2013. On October 11, 2013, the Center transmitted by email to Fabulous.com (the “First Registrar”) a request for registrar verification in connection with the disputed domain names. On October 14, 2013, Fabulous.com, the First Registrar, informed the Center that the disputed domain names had been transferred to 1API GmbH, the Second Registrar. On October 17 and 18, 2013, respectively, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2013 providing the Second Registrar and the registrant contact information disclosed by the Second Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 21, 2013.
The Center verified that 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”).
On October 21, 2013, the Center received four email communications from Respondent, before the Center formally proceeded to the notification of the Complaint.
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 October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013.
On October 22, 2013, the Center received five additional email communications from Respondent. On October 23, 2013, the Center received two email communications from Respondent. On November 6, 2013, the Center received two email communications from Respondent. The Panel addresses all thirteen of Respondent’s email communications in sections 6-A and 6-B below.
The formal Response was filed with the Center on November 11, 2013, followed by an amendment on the same date. The Panel accepts the amendment to the Response and refers to the Response as amended as the “Response” in this proceeding
On November 17, 2013, the Respondent submitted to the Center by email an additional proposed exhibit to the Response together with additional argument on the merits of this dispute in the body of the email. The Center replied to the Respondent on November 18, 2013. Citing paragraphs 10 and 12 of the Rules, the Center stated “It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.” On November 19, 2013, the Center received the Complainant’s comments on Respondent’s Supplemental Filing.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 15, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 purveyor of many luxury goods including, as relevant to this dispute, brandies and Cognacs. One of its Cognac products is a collection branded as LOUIS XIII. The Complainant holds many trademarks around the world for LOUIS XIII, the first of which dates back to the nineteenth century. Nothing in the Complaint indicates or suggests that the Complainant has or intends any activities in casinos or gaming.
The Respondent registered two of the disputed domain names in April 2013 and the third on August 7, 2013. The Respondent owns many domain names and is in the business, among others, of buying and selling domain names. An Internet user who enters any of the disputed domain names into her browser is immediately redirected to “www.choosebestdomain.com/holding”, at which page is stated “We sell Domain Names and Web Hosting .com .net. .org and .co.uk are available” and “Payments may be made by Bank/Wire Transfer, Credit Card or Escrow (see below).”
The parties traded emails between August 21 and 23, 2013. The Complainant identified its trademark rights and demanded transfer of the disputed domain names. The Respondent requested the Complainant to identify the Complainant’s use of its marks in the casino and hotel industries. Neither party responded to the other’s requests.
5. Parties’ Contentions
The Complainant contends as follows:
1. The Complainant first addresses two procedural issues. It characterizes as cyberflight the transfer of the disputed domain names from the First Registrar to the Second Registrar two days after service of the original Complaint, and notes that simultaneous transfer of ownership from a privacy service to the Respondent was in violation of paragraphs 8(a) and 8(b) of the Policy.
2. Each disputed domain name has as its dominant feature LOUIS XIII, which either mirrors the Complainant’s many LOUIS XIII marks or is confusingly similar to many others that incorporate LOUIS XIII. Neither the generic Top-Level Domain (gTLD) nor addition of a word descriptive of services (such as “casino”) obviates confusing similarity.
3. The Respondent has never been known by any name incorporating LOUIS XIII and the Complainant has never authorized the Respondent to use its LOUIS XIII marks. The use to which each disputed domain name has been put, possible sale of the domain name, is not legitimate under Policy precedent. The Respondent can demonstrate no other right or legitimate interest in any of the disputed domain names.
4. Offering to sell the disputed domain names, cyberflight, hiding behind a privacy service, post-Complaint changing the name of the registrant, and the Respondent’s refusal to reply to the pre-Complaint demands for transfer are all examples of bad faith. The Respondent has frequently engaged in cybersquatting as evidenced by six cases in which he was ordered to transfer domain names after conduct similar to that demonstrated here. “Given the distinctiveness, notoriety and premium quality – luxury – of the Complainant’s mark it is reasonable to infer that the Respondent has registered the [disputed] domain names with full knowledge of the Complainant’s mark and for the purpose of misleading and disrupting the business of the Complainant.”
The Respondent contends as follows:
1. The Respondent also begins with two procedural issues.
First, he demands that the Complainant specify the mutual jurisdiction to which it will submit pursuant to paragraph 3(b)(xiii) of the Rules. The Complaint states “the courts at the location of the principal office of the concerned registrar.” The Respondent asks “WHICH Registrar” and implies that the Complaint is deficient without the Complainant’s specifying the home jurisdiction of the First Registrar (Queensland, Australia) or the Second Registrar (Homberg, Germany).
Second, citing an email from the First Registrar (Response, Exhibit 9) the Respondent objects to naming John Pepin as the Respondent, stating that the proper Respondent is Emedia Development Ltd.
2. While not denying the Complainant’s trademark rights in respect to some goods or services, the Respondent does not believe that those rights extend to gaming or hotels. Thus the addition of one of these words in each disputed domain name renders it not confusingly similar to the Complainant’s marks.
3. The Respondent registered the disputed domain names with no knowledge of the Complainant’s marks; the first he heard of the Complainant’s Cognac trademarks was in the first demand letter from the Complainant. The Respondent registered the disputed domain names because they were related to an under-construction luxury hotel in Macau, China and an existing hotel in Strasbourg, France. The disputed domain names “are generic and the Respondent has rights in them.”
4. The Respondent repeats that he was unaware of the Complainant’s marks when he registered the disputed domain names. None of the disputed domain names has been used for any purpose. All were pointed toward a holding page awaiting development. The length of time of non-use is too short to infer registration in bad faith. All the disputed domain names have always been held by Emedia, a “separate legal entity” from John Pepin, so none of the prior UDRP violations cited by the Complainant may be attributed to the Respondent in this case.
6. Discussion and Findings
Before proceeding to the requirements of the Policy the Panel must address the two procedural issues raised by the Respondent.
A. Mutual Jurisdiction
Because of its jurisdictional implications on this proceeding the Panel turns first to the Respondent’s request that the Complainant identify a specific jurisdiction, not merely paraphrase the Rules, as to the Mutual Jurisdiction (as defined in the Rules, paragraph 1) to which it will submit should this Panel’s decision be followed by court proceedings.
The two cases that the Respondent cites in support of its request are of no relevance, as both concerned issues different from the one raised here. Boffi S.p.A. v. Vincent Lecompte, WIPO Case No. D2001-0450, required the complainant to designate either the jurisdiction of the respondent or the registrar. UBS Paine Webber Inc. v. email@example.com 9876543210, WIPO Case No. D2003-0349, addressed the meaning of “principal office” (part of the definition in Rule 1) of a single registrar. Not surprisingly, as the Policy intends to prohibit transfer from one registrar to another after the filing of a complaint, this Panel can find no case on the issue here presented: in the Respondent’s words, “WHICH registrar?”
A decent case can be made either way. The Complainant, invited to amend after the Center received word of the transfer, identified the Second Registrar as “the registrar” in the amended Complaint, while noting in a different context its concern over what it describes as cyberflight. It could thus be said that the Complainant waived any right to assert that the home jurisdiction of the First Registrar was what it consented to. However the Complainant can certainly not be blamed for a post-Complaint transfer from one registrar to another, and it could be said that it should not be harmed by conduct that even the Respondent acknowledges was outside the Policy.
This is an issue that the Panel prefers to defer to the court or courts – in Australia or Germany or perhaps elsewhere – in which the Respondent may seek to challenge this Decision. All courts are acutely sensitive to jurisdictional issues and should the Respondent pursue this matter in litigation any court will determine the issue de novo; as with any other the Panel’s ruling is neither res judicata nor collateral estoppel nor otherwise binding in any way. As the Center deemed the amended Complaint compliant with the Rules, so will this Panel.
One aspect of this thorny issue admits of no doubt. In none of his pre-Response emails to the Center did the Respondent indicate why or how resolution of this issue bore on his prospective defenses. In the Response he similarly identifies no matter that might have altered his Response on jurisdiction or the merits. Likewise the Respondent gives no reason why this defense, if defense it be, could not have been raised in the Response itself. The all-too-obvious conclusion from this is that this issue, similar to others this Respondent has raised in other Policy proceedings,1 was nothing more than an obstructionist, stalling tactic. The Panel commends the Center for its not extending the time for a Response as a result.
B. Identity of the Respondent
Paragraph 1 of the Rules provides that “Respondent means the holder of a domain-name registration against which a complaint is initiated.” The Second Registrar’s reply to the Center’s inquiry indicates:
“Registrant Name: J Pepin
Registrant Organization: Emedia Development Ltd”
Faced with this information the Complainant, understandably and in compliance with paragraph 1 of the Rules quoted above, named both J Pepin and Emedia Development Ltd. as the Respondent.
While the Policy and Rules as initially drafted contemplated a single registrant-respondent, it has become a common and generally accepted practice to name additional entities in appropriate circumstances, most notably when the registrant uses a privacy service. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9.
This Panel will follow that accepted practice and treat both J. Pepin and Emedia Development Ltd as the Respondent, rather than limiting that designation to the registrant named by the Second Registrar, J. Pepin, or the registrant behind the privacy service named by the First Registrar, Emedia Development Ltd, only.2
As with the Respondent’s first procedural issue, this is a matter that the Respondent could and should have raised in the Response itself rather than in pre-Response communications with the Center. Policy proceedings are not litigation. The Policy, the Rules, and the Supplemental Rules make very limited provision for motions or similar procedural challenges outside the single pleading allowed each party. That comports with the Policy’s stated objective of expedited review of the limited class of cases falling within its purview. Once again the Panel views the Respondent’s contrary approach as a delaying tactic.
C. The Respondent’s Supplemental Filing
This Panel will follow accepted Policy precedent on this issue as well and deny leave for the Respondent to submit his supplemental evidence and argument. As provided in the WIPO Overview 2.0, paragraph 4.2, unsolicited supplemental filings are accepted only in exceptional circumstances, and the Respondent has identified (and the Panel can find) nothing exceptional justifying the filing here. On the contrary the proposed evidence is a newspaper article whose date precedes the filing of the Response. Both that article and the accompanying argument are cumulative of what is included in the Response.
D. The Merits.
(i) Requirements under the Policy. To succeed in this Policy proceeding the Complainant must demonstrate, by a preponderance of the evidence, as required by paragraph 4(a) of the Policy, that:
(a) the disputed domain names are identical to or confusingly similar to a mark in which the Complainant has rights;
(b) the Respondent lacks rights or legitimate interests in the disputed domain names; and
(c) the Respondent registered and used the disputed domain names in bad faith.
These requirements are conjunctive. Failure on any results in a denial of the Complaint. In this proceeding only the third presents a serious issue for the Panel to consider.
(ii) Identical or Confusingly Similar. The Respondent does not challenge the Complainant’s registered trademarks for LOUIS XIII though he does contest the scope of those rights. As pleaded in the Complaint, LOUISXIII is the dominant feature of each of the disputed domain names. That establishes confusing similarity for purposes of paragraph 4(a)(i). The relevance, if any, of the scope of the Complainant’s rights are matters for the Panel’s analysis under the other two clauses of paragraph 4(a). WIPO Overview 2.0, paragraph 1.2.
(iii) Rights or Legitimate Interests. The Complainant has made its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names by noting without contradiction that the Respondent has never been known, individually or commercially, by any designation including the phrase LOUISXIII and that the Complainant has not authorized the Respondent to use its marks. The burden of production thus shifts to the Respondent to demonstrate that he has such a right or legitimate interest.
The Respondent identifies two bases for his defense: that the disputed domain names incorporate words that “are generic and the Respondent has rights in them;” and that the Respondent selected the disputed domain names for reasons unrelated to the Complainant’s marks.
The first contention fails for three simple and obvious reasons. First, there is no inherent or automatic right to register a “generic” or common word or phrase if that word or phrase duplicates or imitates another’s mark. Many trademarks, including some very well known ones (e.g., Apple, The Limited), consist entirely of common words or phrases. Second, while “Louis” may be a common name and “XIII” a straightforward Roman numeral, the combination of the two is by no means common or “generic”3. Third, to the extent that LOUIS XIII has a “generic” meaning it refers to the French monarch who bore that name. The Respondent has not used the disputed domain name in this, its “generic,” sense.
The Respondent’s second contention, while relevant to bad faith, does not even if correct lead to the conclusion that the Respondent possesses a right or legitimate interest to make use of a third party’s name or trademark, as the Respondent states that he has done.
The Complainant has met its evidentiary burden under paragraph 4(a)(ii) of the Policy.
(iv) Registered and Used in Bad Faith. At the outset the Panel notes that three of the items the Complainant cites as evidence of bad faith do not necessarily, and on the record in this case do not in fact, support the Complainant’s desired inference. Use of a privacy service may be done for entirely legitimate reasons, and that appears to be the case here. And the real party in interest has been identified, allowing the proceeding to proceed in the ordinary course. Changing the name of the registrant from the privacy service to the real party in interest is not a change of registrant and normally not indicative of bad faith.4 Failure to respond to a demand letter is similarly not by itself evidence of bad faith.
Cyberflight is another matter, but it is uncertain if that has occurred in this case. The Respondent asserts that he made the transfer in the ordinary course of its business, and neither Registrar provided any contrary indication. The apparent timing of the transfer, two days after the Center contacted the First Registrar and after the Complainant’s service of the original Complaint, on its face does look less than coincidental. In an email to the Second Registrar the Respondent asks for confirmation that the Second Registrar’s principal office is in Germany, suggesting that the Respondent made the transfer for tactical reasons after the Complaint was served. These facts and the fact that the Respondent has attempted to game the UDRP process in this and other proceedings5 similarly raise suspicions. But UDRP panels deal in evidence, not suspicion or suggestion, and the evidence does not demonstrate clear cyberflight.
Whether the Respondent has used the disputed domain names in bad faith turns in part on the interpretation of the landing page to which an Internet user entering them into a browser is redirected. The Complainant asserts that redirection to this page implies the Respondent’s desire to sell the disputed domain names, presumably for an amount in excess of his registration costs. The Respondent calls this page “a holding page,” compares it to his “For Sale” page, and contends that re-direction to this page amounts to passive holding.
Both the page at issue and the home page at the Respondent’s website, “www.choosebestdomain.com” begin with the words “We sell Domain Names.” That fact and the redirection itself tip the scales in favor of the Complainant’s contention. Overwhelming proof is not necessary; all the Policy requires is a preponderance of the evidence. The Panel finds that the Complainant has demonstrated use in bad faith.
Whether the Respondent registered the disputed domain name in bad faith presents a more difficult issue. The Panel finds unconvincing the basis upon which the Complainant asks the Panel to infer bad faith registration, quoted as the final sentence of section 5-A-4 above. Contrary to the Complainant’s contention, LOUIS XIII is not a famous trademark. The evidence in the record, including that submitted by the Respondent, indicates that it is not associated exclusively or primarily with the Complainant. The Complainant’s reference to luxury cuts against its claim of fame. The market for the LOUIS XIII Cognac is small; at USD 3,000 or so a bottle6 it is beyond the pocketbook of most brandy drinkers, this Panel included. The Complainant has not demonstrated advertising or other figures to support widespread association of the mark with the Complainant. Unlike other high-end brands (for example Ritz, Cadillac, or Rolls-Royce), LOUIS XIII is not a phrase associated with luxury or high prices generally; one doesn’t hear of “the LOUIS XIII of banks” while “the Rolls-Royce of banks” has a ready meaning.
All this would be academic if the evidence showed that the Respondent actually knew of the Complainant’s mark, but it does not. The Respondent, “hand on heart,” states that he had never heard of the Complainant’s LOUIS XIII mark prior to receiving the Complainant’s first demand letter. While if the mark were famous this could be discounted as self-serving and incredible, that is not the case with the mark at issue for the reasons given above. It is just as likely that the Respondent registered the disputed domain names because of their similarity to the hotels, as he says he did, as because of their similarity to the Cognac.
For two reasons not directly advanced by the Complainant, however, the Panel believes that bad faith registration has been proven upon the evidence in the record.
The Complaint hints at the first of these when it recites the six UDRP cases in which the Respondent has been ordered to transfer other domain names it had registered. Six cases are in this Panel’s opinion sufficient to satisfy the pattern proviso in paragraph 4(b)(ii) of the Policy. That clause identifies as evidence of bad faith that “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.” Other evidence in the record, most notably the Respondent’s list of domain names incorporating hotel references, adds to the necessary pattern of conduct. That list, Respondent’s Exhibit 3, includes at least a dozen domain names that incorporate names of particular hotels.
The UDRP precedent requiring targeting and actual knowledge of the complainant’s mark to find registration in bad faith has been developed from cases in which the complainant asserted paragraph 4(b)(iv) of the Policy as the exemplar of bad faith applicable to the respondent’s conduct. That clause cites “creating a likelihood of confusion with the complainant’s mark” (emphasis added) as the harm and intention evidencing bad faith. Paragraph 4(a)(ii) in contrast is not so limited. There the harm and intent are (emphasis added) “to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” The express language of the latter does not, as does the former, limit application to the Complainant’s marks. In this proceeding the Respondent has acknowledged registering the disputed domain names because of their similarity to two hotels, both of which on the Respondent’s evidence have at least common law rights in marks identical or confusingly similar to the disputed domain names. If the pattern proviso in paragraph 4(b)(ii) can be proven – as this Panel finds it has been in this case – a defense that a respondent is cybersquatting upon a third party mark rather than the complainant’s mark cannot stand.
Given not only the Respondent’s status as a domainer but also the evidence of his not infrequent registration of domain names incorporating the marks of others, the Panel also has no difficulty extending to the Respondent some pre-registration duty of investigation if he is to avoid a finding of bad faith by claiming ignorance of a trademark. See WIPO Overview 2.0, paragraph 3.4, seventh and eighth paragraphs. As stated there, “Some panels have found that in certain circumstances there may be an affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others.” This Panel, while hesitant to adopt this as a general rule, cannot imagine more compelling “circumstances” for its application than a pattern of intentional registrations of domain names incorporating others’ marks, as demonstrated in this case. The Respondent’s mistaken belief that anyone has an automatic right to any “generic” word in a domain name does nothing to modify this conclusion.
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 <louisxiiicasino.com>, <louisxiiihotel.com>, and <louisxiiihotels.com> be transferred to the Complainant.
Richard G. Lyon
Date: November 27, 2013
1 See especially Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041 (objection to applicability of the Supplemental Rules; request for suspension; post-complaint lawsuit. The panel in that case found each of these to be an intentional attempt at delay.), and Abu Dhabi Future Energy Company PJSC v. John Pepin, WIPO Case No. D2008-1560 (groundless objection to panel’s impartiality; unsolicited supplemental submission).
2 For ease of understanding and to distinguish from the Complainant the Panel in this Decision uses the third person masculine pronoun (“he” or “his”) to refer to the Respondent.
3 Compare, for example, United Airlines or The Wall Street Journal. Each of these well-known marks consists entirely of common words.
5 See section 6-A and footnote 1, supra. The Respondent’s contention that misconduct of John Pepin in prior cases may not be attributed to a company he clearly controls rates no more than a footnote. Even if that assertion were true, this Panel will attribute the conduct of the dummy to the ventriloquist and vice versa.
6 This was the price found by the Panel for a 750 ml bottle of Remy Martin Louis XIII on a discount website.