WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Remy Cointreau v. du biao

Case No. D2015-1265

1. The Parties

The Complainant is Remy Cointreau of Cognac, France, represented by Nameshield, France.

The Respondent is du biao of “Xin Xiang”, China.

2. The Domain Name and Registrar

The disputed domain name <remycointreau.wang> (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2015. On July 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2015, 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.

On July 27, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 28, 2015, the Complainant requested that English be the language of the proceeding. On July 29, 2015, the Respondent requested that Chinese be the language of the proceeding.

The Center verified that the 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 in English and Chinese, and the proceeding commenced on August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. The Respondent did not submit any formal response save for email communications dated August 5, 2015 and August 25, 2015 which are not substantive but relates only to the language of the proceeding. Accordingly, the Center notified the parties that it would proceed to the Panel Appointment process on August 26, 2015.

The Center appointed Karen Fong as the sole panelist in this matter on September 4, 2015. 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.

On September 5, 2015, the Respondent sent an email to the Center with its response to the Complaint.

4. Factual Background

The Complainant was formed in 1990 as a result of the merger of holding companies of the Hériard Dubreuil and Cointreau families which controlled respectively the E. Remy Martin & C ° Company and the Cointreau Company. It is also the result of successive alliances between companies operating in the same sector of wines and spirits. Its main activity is the production and the sale of cognacs and liqueurs. Ninety-five percent of the production is sold outside France.

The Complainant owns many brands including COINTREAU, REMY MARTIN and REMY COINTREAU. The Complainant owns international trade mark registration for REMY COINTREAU under trade mark registration number 895405 registered on July 27, 2006. REMY COINTREAU is also registered in the Trade Mark Clearing House (TMCH) since January 28, 2015.

The Complainant owns and communicates on the Internet through various websites worldwide. Its main website is “www.remy-cointreau.com”, with corresponding domain nameregistered on October 7, 1996. The Complainant also owns the following domain names comprising the trade mark REMY COINTREAU.

The Respondent registered the Domain Name on July 1, 2015. It is not presently connected to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the REMY COINTREAU trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the stipulated time limit but filed late submissions. It contends as follows:

1. That Chinese should be the language of the proceeding as the “.wang” generic Top-LevelDomain (gTLD) was set up to cater for the Chinese speaking community, “wang” being Pinyin (system used to write Chinese in Latin alphabet) for the words “king” and “net” in Chinese. The Registration Agreement is in Chinese and the Respondent is based in China. The use of English would be unfair to the Respondent.

2. The fact that the Domain Name is registered in Latin alphabet does not mean that the Respondent is familiar with the English language since Pinyin (system used to write Chinese) also uses Latin alphabet.

3. Domain names are registered on a first come first serve basis. Trade mark holders were given priority to register the trade mark during the sunrise period.

4. A domain name is not a trade mark and the Pinyin “remycointreau” itself is not a domain name.

5. There is no bad faith registration and use of the Domain Name which was registered to generate value.

6. Discussion and Findings

A. Procedural

The due date for the Respondent for filing its response was August 25, 2015. The Respondent sent two emails to the Center within this deadline, neither of which were substantive responses to the Complaint. On September 5, 2015, it sent an email which responds to the Complaint. Paragraph 15(a) of the Rules instructs this 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 purpose of the UDRP is to provide for a quick and inexpensive way to resolve domain name disputes. Each party has one opportunity to put forward its entire case. Whilst the Respondent did not file its response within the time frame, the Panel has decided to grant it leeway in this instance and has given due consideration to the contentions made.

B. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

C. Preliminary Procedural Issue – Language of the Proceeding

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the Registration Agreement between the Respondent and the Registrar in relation to the Domain Name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.

The Complainant submits in an email to the Center on July 28, 2015 that the language of the proceeding should be English. The Complainant contends that the Domain Name is registered in ASCII characters using the Roman alphabet. English is the most widely used languages in international relations. The Complainant is located in France and has no knowledge of Chinese. In order to proceed in Chinese the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall costs of these proceedings. This would be onerous and burdensome for the Complainant.

The UDRP was established to deal with the problem of cybersquatting. It has proven to be a very effective tool as it is speedy and relatively inexpensive. With the launch of the new gTLD, the opportunities for cybersquatters have increased. Whilst safeguards have been built in, it would follow that the cost of stopping abusive domain name registrations on the part of brand owners would and has increased.

The Panel has considered the submissions of both parties in relation to the language of the proceeding as well as the merits of the case which it can do as this comes within the circumstances of the proceedings that a Panel should consider in such instances. This is a clear case of cybersquatting, the reasons of which are set out below. The Panel is of the view that the Complainant should not have to be made to bear even more of a cost burden in such cases. This is a case where the Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Panel has considered the late submissions of the Respondent filed in Chinese in coming to its decision. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.

D. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the REMY COINTREAU trade mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises entirely of the trade mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffix, “.wang”. In any event, the word “.wang” is descriptive. It is used for the Chinese online market because it is Pinyin for the Chinese word for “Internet”. This descriptive term does not negate the identity or confusing similarity encouraged by the Respondent’s use of the Complainant’s trade mark in the Domain Name.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

E. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as indicated at paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant alleges that it has not franchised, licensed, consented or otherwise authorized the Respondent to use its REMY COINTREAU trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any information which establishes that it has rights or legitimate interests in the Domain Name. That it registered the Domain Name before the Complainant does not establish rights or legitimate interests under the UDRP. Indeed a brand owner cannot be expected to register its trade marks in every gTLD, which is why there are rights protection mechanisms to stop abusive registrations. The words Remy Cointreau in Piniyin have no meaning in the Chinese language. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

F. Registered and Used in Bad Faith

The REMY COINTREAU trade mark was registered and used before the Domain Name was registered. The Complainant has a substantial presence in the Chinese market, which is a big market for cognac.

The Respondent has provided no information as to why it chose to register REMY COINTREAU which has no meaning and significance in Chinese other than being associated with the Complainant. Just because a trade mark owner does not register a domain name during the sunrise period does not mean that a third party registering the trade mark as a domain name does so in good faith which appears to be what the Respondent is arguing. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name and such registration was made in bad faith.

The Respondent has not demonstrated any activity in connection with the Domain Name. This does not prevent a finding of bad faith. The Consensus View of UDRP Panels as provided in paragraph 3.2 of the WIPO Overview 2.0 is that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

The mark REMY COINTREAU which in itself is well known is also a combination of a very well known cognac, REMY MARTIN and spirit, COINTREAU. The Respondent has indicated that it is of the view that the Domain Name would generate value and could be used for a valuable new business. The passive holding of this Domain Name with such an intent amounts to bad faith use. Considering the circumstances, the Panel considers that the Domain Name was registered and used in bad faith.

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 Domain Name <remycointreau.wang> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: September 25, 2015